Federal Circuit Finds Cordis' Cardiac Catheters Infringed Dr. Voda's Patents, But Affirms Denial of Injunctive Relief

Holding:

The U.S. Court of Appeals for the Federal Circuit affirmed a jury's finding that Cordis Corp.'s curved catheter infringed Dr. Jan K. Voda's patented catheters that consisted of straight portions. The Federal Circuit explained that Voda introduced substantial evidence establishing that the redesigned curve portion of the XB catheter meets the "straight" and "substantially straight limitations" under the doctrine of equivalents. On the issue of willfulness, the Federal Circuit found that, based on case records, a jury instruction in accord with the In re Seagate objective recklessness standard may have changed the result of the jury verdict on willfulness. Accordingly, it vacated the finding of willfulness and remanded the case for a determination of whether Cordis’ infringement was willful under the objective recklessness standard of Seagate. With regard to the district court's denial of permanent injunction, the Federal Circuit rejected Voda's argument based on the irreparable harm to its exclusive licensee. The Federal Circuit reasoned that irreparable harm must fall on the party seeking injunction. Here, Voda failed to show that Cordis’s infringement caused him irreparable injury and that monetary damages were inadequate to compensate him. Accordingly, the Federal Circuit affirmed the district court’s denial of Voda’s request for a permanent injunction.

Detailed Summary:

This is a patent infringement case involving catheters used in interventional cardiology. The issues on appeal and cross-appeal include claim construction, patent validity, infringement, willfulness, and the district court’s denial of a permanent injunction. Opinion, p. 1.

Dr. Jan K. Voda, M.D., (“Voda”) sued Cordis Corporation (“Cordis”) for infringement of his ’625 patent, ’213 patent, and ’195 patent in the United States District Court for the Western District of Oklahoma. The parties tried the case to a jury, and it returned a verdict finding that Cordis willfully infringed all asserted claims of the patents-in-suit and that claims 1 through 3 of the ’213 patent were not invalid. The jury also determined that Voda was entitled to a reasonable royalty of 7.5% of Cordis’s gross sales of the infringing XB catheters. Following the jury verdict, the district court denied Cordis’s motion for judgment as a matter of law (“JMOL”) that claims 1 through 3 of the ’213 patent were invalid and that Cordis’s XB catheters did not infringe any of the asserted claims of the patents-in-suit. The district court also granted Voda’s motion for enhanced damages and attorneys’ fees but denied Voda’s request for a permanent injunction. Id., p. 2.

In this appeal, Cordis argued, in support of its non-infringement position, that the use of the words “along a line” in claim 1 of the ’213 patent requires the contact portion of the catheter to be straight in its rest state because “‘straight’ is inherent in the word ‘line.’” Id., p. 10. The district court, however, found that the claim is not limited to linear portions of the aorta. On appeal, the Federal Circuit affirmed the district court’s construction, stating that Cordis’ argument ignored the context in which the phrase “along a line” is used in claim 1. Id., citing Phillips v. AWH Corp., 415 F.3d 1303, 1314. (Fed. Cir. 2005). In Phillips, it was held that the “context in which a term is used in the asserted claim can be highly instructive.” Id.

Although the use of “along a line” does not by itself support Cordis’s construction, the words of the claims “must be read in view of the specification, of which they are a part.” Id., p. 11, citing Phillips, 415 F.3d at 1315.  After examining the patent claim, specification, and prosecution history, the Federal Court rejected Cordis’ claim construction of “along the line.”

With respect to the issue of infringement of the straight and substantially straight claims under the doctrine of equivalents, Cordis had redesigned some of its products to avoid literal infringement. However, these were found to infringe under the doctrine of equivalents. In particular, a “second straight portion” claim element was not literally found in the Cordis products, but the jury found that the products did include an equivalent element.

On appeal, the Federal Circuit concluded that Voda introduced substantial evidence establishing that the redesigned curve portion of the XB catheter meets the straight and substantially straight limitations under the doctrine of equivalents. One of Voda’s experts testified that the difference in shape between the redesigned curve portion and a straight portion was so insubstantial that cardiologists would have difficulty distinguishing the two during use. The Federal Circuit also pointed to testimony that the redesigned curve portion performed the same function as a straight portion, in the same way, to achieve the same result. Id., p. 23.

Substantial evidence supported the jury’s findings that Cordis’s XB catheters infringed the straight and substantially straight claims of the ’625 and ’195 patents under the doctrine of equivalents. Accordingly, the Federal Circuit affirmed the jury’s findings of infringement with respect to these claims. Id., p. 24.

With respect to the issue of willfulness, the parties agreed that the jury instruction on such matter was erroneous under In re Seagate (497 F.3d. 1360)(Fed. Cir. 2007). Under the new Seagate standard for willfulness, “proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness.” Id., p. 25. Nonetheless, Voda argued that the willfulness finding should be upheld because the error in the jury instruction was harmless. Specifically, Voda argued that the instructional error was harmless because the evidence showed that Cordis’s XB catheters were intentional copies of the Voda catheters. However, Voda pointed to no evidence that shows that the accused Cordis XB catheters are literal copies of Voda’s patented catheters. Id. p. 27.

Based on case record, the Federal Circuit found that a jury instruction in accord with the Seagate objective recklessness standard may have changed the result of the jury verdict on willfulness.  Accordingly, it vacated the finding of willfulness and remanded the case for a determination of whether Cordis’s infringement was willful under the objective recklessness standard of Seagate.

On remand, the district court may at its discretion assess Voda’s evidence of willful infringement under the Seagate standard to determine whether a new trial on willfulness is necessary or whether Voda’s evidence was insufficient as a matter of law to support a finding of willfulness. Id., referring to Hilton Davis Chem. Co. v. Warner-Jenkinson Co., Inc., 114 F.3d 1161, 1164 (Fed. Cir. 1997).

With regard to the district court’s finding of non-infringement of claims 4 and 5, the Federal District reversed on the basis of amendment-based estoppel.  Under amendment-based estoppel, “[a] patentee’s decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim.”  Id., p. 21, citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740-41 (2002).

Under this rule, Voda was presumed to have disclaimed methods that do not involve catheters with a first substantially straight leg. Id., p. 22, referring to Festo, 535 U.S. at 740-41. Moreover, Voda failed to make any argument to overcome this presumption. Accordingly, the prosecution history of claims 4 and 5 of the ’213 patent barred a finding of equivalence between the redesigned curve portion of the Cordis catheters and “first substantially straight leg” limitation. The district court therefore erred in denying Cordis’s post-trial motion for judgment as a matter of that it does not infringe claims 4 and 5 of the ’213 patent under the doctrine of equivalents. The Federal Circuit thus reversed the finding of infringement with respect to these claims.

With regard to the issue of the district court’s denial of Voda’s application for pemanent injunction against Cordis, the Federal Circuit ruled against Voda. The district court found that Voda had not identified any irreparable injury to himself due to Cordis’s infringement of his patents and also failed to show that monetary damages were inadequate to compensate for Cordis’s infringement. The district court explained that Voda had attempted to prove irreparable injury by alleging irreparable harm to his exclusive licensee, rather than himself.

Voda argued that the district court erred in adopting a categorical rule that precludes a patent owner from proving its entitlement to an injunction by showing irreparable harm to its exclusive licensee. Specifically, Voda argued that such a categorical rule conflicts with eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006).

The Federal Circuit however disagreed with Voda that the denial of a permanent injunction in this case conflicts with eBay. “The Supreme Court held only that patent owners that license their patents rather than practice them ‘may be able to satisfy the traditional four-factor test” for a permanent injunction. Id. (emphasis added). Nothing in eBay eliminates the requirement that the party seeking a permanent injunction must show that “it has suffered an irreparable injury.’ Id. (emphasis added). Moreover, we conclude that the district court did not clearly err in finding that Voda failed to show that Cordis’s infringement caused him irreparable injury. In addition, we find that the district court did not clearly err or abuse its discretion in finding that monetary damages were adequate to compensate Voda. Accordingly, we affirm the district court’s denial of Voda’s request for a permanent injunction.” Id., pp. 28-29.

For the foregoing reasons, the Federal Circuit affirmed the judgment of infringement with respect to claims 1 through 3 of the ’213 patent as well as the judgment that those claims are not invalid. In addition, it affirmed the judgment of infringement with respect to claim 1 of the ’625 patent and all claims of the ’195 patent. It also affirmed the district court’s denial of a permanent injunction. However, the Federal Circuit reversed the finding of infringement with respect to claims 4 and 5 of the ’213 patent. Lastly, the Federal Circuit vacated the judgment of willfulness with respect to all claims and remanded for a determination of willfulness under the standard recently adopted in Seagate.

Also See:

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