Court Upholds Jury Findings of Infringement and No Invalidity of Liposuction Patent
April 09, 2001
Last Month at the Federal Circuit - May 2001
Judges: Lourie (author), Mayer, and Schall
In Mentor H/S, Inc. v. Medical Device Alliance, Inc., No. 99-1532 (Fed. Cir. Apr. 9, 2001), the Federal Circuit reversed a district court’s JMOL that the asserted claim was invalid and not infringed, but affirmed a denial of enhanced damages for willful infringement.
Mentor H/S, Inc. (“Mentor”) charged Medical Device Alliance, Inc. and others (collectively “MDA”) with infringement of U.S. Patent No. 4,886,491 (“the ‘491 patent”). The ‘491 patent claims a method for ultrasonic-assisted liposuction by melting fatty tissue with heat produced by ultrasonic vibrations.
After a jury verdict of direct, contributory, and induced infringement of the ‘491 patent, the district court granted the Defendants’ motion for JMOL that the ‘491 patent was invalid for violating the best-mode requirement and was not infringed by the Defendants. Furthermore, the district court granted a conditional new trial for anticipation, obviousness, and inequitable conduct, and denied Mentor’s motion for enhanced damages and attor - ney fees.
With respect to the best-mode issue, the Defendants argued that the inventor had failed to disclose in the ‘491 patent the details of his preferred circuitry. The Federal Circuit rejected that argument, holding that the invention claims a method of using ultrasonic vibrations to create heat and melt fat, but does not claim a particular circuitry. Moreover, the Federal Circuit held that the bestmode requirement was satisfied by the patent’s disclosure of the inventor’s preferred vibration frequencies, from which a person skilled in the art could have selected appropriate circuitry.
The Federal Circuit also reversed the grant of a conditional new trial on anticipation, obviousness, and inequitable conduct. First, the Federal Circuit reversed the district court’s holding of anticipation, observing that the cited prior art did not teach the melting of fat. The Federal Circuit also rejected the Defendants’ inherent anticipation argument, holding that the mere possibility that the prior art devices may produce sufficient heat to melt fat was insufficient for inherent anticipation.
Second, the Federal Circuit reversed the grant of a new trial on obviousness, holding that the district court had failed to articulate how the prior art references disclose the melting of fat and had failed to point to any motivation to combine the references.
Third, the Federal Circuit reversed the grant of a new trial on inequitable conduct, holding that the allegedly withheld prior art was merely cumulative of other prior art before the Examiner. The Court ruled that the Defendants had failed to demonstrate deceptive intent in withholding the prior art references, noting that mere knowledge of a cumulative reference is not indicative of an intent to deceive.
The Federal Circuit also reversed the grant of JMOL with respect to infringement, finding that substantial evidence supported the jury’s verdict that the Defendants had willfully contributed to and induced infringement. The Federal Circuit concluded that Mentor had offered substantial evidence that the accused device was not a staple article suitable for noninfringing uses and, in fact, had never been used for anything other than the patented method. Moreover, the Federal Circuit held that substantial evidence supported the jury’s finding that the Defendants had induced infringement by selling the accused device with the intention that doctors use it to perform the patented method.
Finally, the Federal Circuit affirmed the district court’s denial of enhanced damages for willful infringement, accepting the finding that the question of willfulness was too close to merit the award.