Substantial Evidence Supports $20 Million Jury Verdict of Infringement
December 04, 2003
Last Month at the Federal Circuit - January 2004
Judges: Rader (author), Mayer, and Michel
In Utah Medical Products, Inc. v. Graphic Controls Corp., No. 03-1081 (Fed. Cir. Dec. 4, 2003), the Federal Circuit affirmed a judgment in favor of Utah Medical Products, Inc. (“Utah”), the patentee, in a patentinfringement suit against Graphic Controls Corporation (“Graphic Controls”) concerning Graphic Controls’ Softrans® device for measuring intrauterine pressure during childbirth.
Utah owns U.S. Patent No. 4,785,822 (“the ‘822 patent”), which describes and claims a device for measuring the internal pressure of a body cavity. The medical device of the ‘822 patent is rigid and can be inserted without a removable guide tube, which was necessary for certain prior art devices. The ‘822 patent claims contain a limitation to a “stiffener means” to ensure the appropriate rigidity for the device.
In construing the claim term “stiffener means,” the district court found the corresponding structure in the ‘822 patent to be a steel stylet. The district court construed the stiffener means to cover the disclosed stylet, or its equivalent structure, that imparts sufficient rigidity to the cable means so that a transducer can be inserted without the use of an external guide tube, and the stylet, or its equivalent structure, is a separate component of the cable means but must be permanently encased within the cable means.
The Softrans® device found to be infringing is a tranducer-tipped intrauterine pressure catheter (IUPC) that achieves rigidity from the hardness and geometry of the plastic casing of the electrical cable. The infringement trial focused on the question of whether the Softrans® device contained the equivalent of a “stiffener means” of the ‘822 patent. The jury found that the hardness and geometry of the plastic casing was an equivalent structure to the steel stylet disclosed as a permanent “stiffener means” in the ‘822 patent. A subsequent bench trial resulted in a finding that the ‘822 patent was not indefinite regarding the “stiffener means” term. Graphic Controls appealed both of these decisions.
On appeal, the Federal Circuit found that the district court properly identified the steel stylet as the corresponding structure for the stiffener means and complimented the district court for correcting its construction before trial after having initially construed the phrase incorrectly.
The Federal Circuit also found substantial evidence to support the jury’s finding that the Softrans® device’s plastic casing was equivalent to the disclosed structure in the ‘822 patent. Expert testimony during the trial established that the plastic casing was interchangeable with the steel stylet for stiffening purposes.
Graphic Controls asserted that the ‘822 patent does not properly link the function of stiffening to a plastic cable cover disclosed in the ‘822 patent and, therefore, any claim allowing a cover to perform that function is invalid as indefinite. The Federal Circuit pointed out that the equivalent found was a hard plastic, dual-lumen cable cover extruded in a specific geometry, not merely a simple plastic cable cover, which, by itself, was not an equivalent to the steel stylet.
In evaluating the damages theory, the Federal Circuit found that the evidence used to make the damages calculation was sound. It was proper for the jury to conclude that nearly every customer that purchased the Softrans® device from Graphic Controls would have purchased the Utah device if the Softrans® device had not been on the market because these were the only two competing products in the defined market. The Court agreed that the market had been properly defined as transducer-tipped IUPCs and excluded other IUPCs, such as fluid-filled IUPCs, which did not compete in price or performance.