Citations
- 485 F. Supp. 2d 519
Full opinion text
MEMORANDUM OPINION
ROBINSON, Chief Judge.
I. INTRODUCTION
Throughout the course of the last ten years, the major manufacturers of stents have filed suit in this court asserting claims of infringement of their respective patents against their competitors. Because of the duplication of causes of action between and among these parties, and in an effort to conserve scarce judicial resources and present manageable disputes to jurors, lawsuits have been consolidated and parties realigned. The procedural history of the instant litigation is no exception. Although the lawsuit originally was filed by the predecessor in interest to Medtronic Vascular Inc. and Medtronic USA, Inc. (collectively, “Medtronic”), claiming infringement by Advanced Cardiovascular Systems, Inc. and Guidant Sales Corporation (collectively, “ACS”) of certain of its patents (“the Boneau patents”), ACS countersued for infringement of certain of its patents (“the Lau patents”). Because judgment was entered in favor of ACS in connection with the Bo-neau patents (D.I.546), the parties were “realigned” in order to proceed with the jury trial on the Lau patents. (D.I.585) In February 2005, at the conclusion of trial, the jury returned a verdict that the Lau patents were valid and infringed by Med-tronic. Presently before the court are Medtronic’s motions for judgment as a latter of law (“JMOL”) and for a new trial. (D.I.650, 651)
II. BACKGROUND
The Lau patents claim endovascular support devices, or stents, that are used in the treatment of cardiovascular disease. ACS’s stents are balloon expandable devices that are formed from a metal tube. (D.I. 427 at 4) These stents are comprised of multiple circular elements that are connected together by connecting elements. Id.
The court first construed the terms of the asserted claims of the Lau patents in its Markman order of January 5, 2005. (D.I.542) The court construed the term “cylindrical element” to require “a circumferential undulating pattern,” and an “undulating pattern” was in turn defined as “a wavelike pattern that includes any combination of U-shaped, W-shaped or Y-shaped members.” (Id. at 3-4) Following a request for reconsideration, the court subsequently withdrew its construction of “cylindrical element” on February 4, 2005, and directed the parties to present evidence as they deemed appropriate in support of their respective interpretations to aid the court in its jury instructions on claim construction. (D.I.587)
A jury trial was held for nine days between February 7 and 18, 2005 on the remaining issues in the case, namely, ACS’s claims of infringement and Med-tronic’s counterclaims that the Lau patents are invalid as obvious and anticipated. (D.I.631-39) Medtronic moved for judgment as a matter of law (“JMOL”) at the close of ACS’s case and both parties moved for JMOL at the close of evidence. The court granted Medtronic’s motion that it does not infringe the Lau patents under the doctrine of equivalents and ACS’s motion that the Lau patents are not invalid as anticipated. As part of the charge to the jury, the court defined the terms “undulating pattern” and “undulating portion” as “a wave-like pattern,” without reference to any particular combination of U-shaped, Y-shaped, or W-shaped elements. (D.I. 639 at 1883:22-23) On February 18, 2005, the jury rendered a verdict that the Lau patents were not invalid, and that Medtronic’s accused products infringe each of the asserted claims. (D.I.629) Medtronic renewed its motion for JMOL on April 18,-2005. (D.I.651)
Medtronic asserts that it is entitled to JMOL on the following grounds: (1) Med-tronic’s stents do not have “cylindrical elements” with an “undulating pattern” as those terms are properly construed; (2) nor do its stents have the “connecting elements” required by the claims of the '154 patent; (3) ACS failed to show that most of Medtronic’s stents comprise expandable cylindrical elements whose length is less than the diameter as required by the claims; (4) ACS failed to show that Med-tronic made, used, or sold the accused stents during the term of the Lau patents; and (5) ACS failed to show ownership of the Lau patents. (D.I. 654 at 2) Medtronic further asserts that it is entitled to JMOL that the asserted claims of the Lau patents are invalid as obvious. (Id.)
Medtronic argues that it is entitled to a new trial because: (1) the jury verdict was based on an incorrect claim construction of “undulating pattern”; (2) the court improperly excluded testimony from several of its witnesses regarding its obviousness defense; (3) the court improperly excluded allegedly incorrect statements made to the United States Patent and Trademark Office (“USPTO”) during the prosecution of the Lau patents; (4) Medtronic’s anticipation defense should have gone to the jury; (5) the court improperly precluded Med-tronic from admitting the court’s prior statements regarding a prior art reference (made in connection with the its doctrine of equivalents analysis in the Boneau case), in violation of the “law of the case doctrine”; and (6) Medtronic was prejudiced in having to present its claim construction evidence to the jury prior to the court’s pronouncement of the “prevailing” construction (ACS’s proposed construction) at the close of evidence. (D.I. 653 at 3^4)
III. STANDARD OF REVIEW
A. Motion for Judgment as a Matter of Law
To prevail on a renewed motion for judgment as a matter of law following a jury trial under Federal Rule of Civil Procedure 50(b), the moving party “ ‘must show that the jury’s findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusions implied [by] the jury’s verdict cannot in law be supported by those findings.’ ” Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed.Cir.1998) (quoting PerkinElmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed.Cir.1984)). “ ‘Substantial’ evidence is such relevant evidence from the record taken as a whole as might be acceptable by a reasonable mind as adequate to support the finding under review.” Perkin-Elmer Corp., 732 F.2d at 893. In assessing the sufficiency of the evidence, the court must give the non-moving party, “as [the] verdict winner, the benefit of all logical inferences that could be drawn from the evidence presented, resolve all conflicts in the evidence in his favor, and in general, view the record in the light most favorable to him.” Williamson v. Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir.1991): Perkin-Elmer Co'tp., 732 F.2d at 893. The court may not determine the credibility of the witnesses nor “substitute its choice for that of the jury between conflicting elements of the evidence.” Id. In summary, the court must determine whether the evidence reasonably supports the jury’s verdict. See Dawn Equip. Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1014 (Fed.Cir.1998).
B. Motion for a New Trial
The decision to grant or deny a new trial is within the sound discretion of the trial court and, unlike the standard for determining judgment as a matter of law, the court need not view the evidence in the light most favorable to the verdict winner. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980). Federal Rule of Civil Procedure 59(a) provides, in pertinent part:
A new trial may be granted to all or any of the parties and on all or part of the issues in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States.
New trials are commonly granted in the following situations: (1) where the jury’s verdict is against the clear weight of the evidence, and a new trial must be granted to prevent a miscarriage of justice; (2) where newly-discovered evidence surfaces that would likely alter the outcome of the trial; (3) where improper conduct by an attorney or the court unfairly influenced the verdict; or (4) where the jury’s verdict was facially inconsistent. See Zarow-Smith v. N.J. Transit Rail Operations, 953 F.Supp. 581, 584 (D.N.J.1997) (citations omitted). The court, however, must proceed cautiously and not substitute its own judgment of the facts and assessment of the witnesses’ credibility for the jury’s independent evaluation. Nevertheless,
[w]here a trial is long and complicated and deals with a subject matter not lying within the ordinary knowledge of jurors a verdict should be scrutinized more closely by the trial judge than is necessary where the litigation deals with material which is familiar and simple, the evidence relating to ordinary commercial practices. An example of subject matter unfamiliar to a layman would be a case requiring a jury to pass upon the nature of an alleged newly discovered organic compound in an infringement action.
Lind v. Schenley Indus. Inc., 278 F.2d 79, 90-91 (3d Cir.1960).
IV. DISCUSSION
A. Medtronic’s Motion for JMOL of Non-Infringement
1. Construction of “undulating pattern”
It is undisputed that Medtronic’s stents are made up exclusively of U-shaped members, and do not comprise Y-shaped or W-shaped members. (D.I. 654 at 15 & ex. C) The court’s final claim construction did not require the presence of Y-shaped or W-shaped members; consequently, Med-tronic was found to infringe all asserted claims of the Lau patents at trial. Med-tronic argues that JMOL of non-infringement is appropriate under the proper construction of “undulating pattern” which, in its view, requires a combination of U-, W-, and Y-shaped members, (Id. at 3-15) In the alternative, Medtronic argues that a new trial is warranted because the jury verdict was based on an improper claim construction (D.I. 679 at 2-3), and/or because the jury was tainted by the court’s “announcing the ‘loser’ of the claim construction dispute” by incorporating ACS’s construction into the jury’s instructions following the close of evidence (D.I. 653 at 33).
In its jury charge, the court instructed the jury that the terms “undulating pattern” and “undulating portion” mean “a wave-like pattern.” (D.I. 639 at 1883:22-23) Medtronic asserts that this construction was improper in view of the Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005) (hereinafter, “Phillips ”). (D.I. 678 at 3) Specifically, Medtronic emphasizes the court’s statement that it “felt it was more important ... under the latest iteration of what the Federal Circuit looks at to make the claim language more consistent rather than trying to make the specification, [and] prosecution history consistent with the claim language.” (D.I. 637 at 1711:8-22) Medtronic argues that the court did not apply the proper weight to the specification in its analysis, violating the pronouncement in Phillips that the specification is “usually ... dispositive; it is the single best guide to the meaning of a disputed term.” (D.I. 654 at 3, citing Phillips, 415 F.3d at 1315) In Medtronic’s view, the specification and the file history indicate that all claims require W-shaped and/or Y-shaped members because it is fundamental to the invention that the cylindrical elements “must be spaced apart.” (Id. at 14)
a. The Lau patents’ common specification
The Lau specification consistently uses the term “undulating pattern” in a manner consistent with its ordinary meaning, i.e., wavy or wavelike. Medtronic has not pointed to any portion in the specification which purports to be a statement of manifest exclusion or restriction of the term “undulating,” such as to require a combination of U-, Y-, and/or W-shaped members. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed.Cir.2002) (“[CJlaim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.”); see also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir.2004) (“Absent a clear disclaimer of particular subject matter, the fact that the inventor may have anticipated that the invention would be used in a particular way does not mean that the scope of the invention is limited to that context.” (citations omitted)). Medtronic instead argues that the specification requires that the cylindrical elements “must be spaced apart,” thus necessitating the presence of W-shaped and/or Y-shaped members which provide the required spacing. (D.I. 654 at 4-5, 14) The specification provides:
The resulting stent structure is a series of radially expandable cylindrical elements which are spaced longitudinally close enough so that small dissections in the wall of a body lumen may be pressed back into position against the luminal wall, but not so close as to compromise the longitudinal flexibilities of the stent.
(col. 2, II. 1-6 (emphases added)) Though this passage makes clear that some spacing is required to ensure longitudinal flexibility, there is nothing in this portion of the specification which equivocates “undulating” with a combination of U-, Y-, and W-shaped members.
Medtronic further argues that the figures of the Lau patents, as well as the specification’s description of the figures, support its construction. Medtronic points to figure 5, which depicts an undulating pattern with U-, Y-, and W-shaped members, with figure 11, which depicts a pattern with both U- and Y-shaped members and was described as an “alternate undulating pattern.” (D.I. 654 at 5-6) According to Medtronic, there would have been no need to distinguish between the two patterns if an “undulating pattern” contains only U-shaped members, (Id. at 6-7) Medtronic, however, has not substantiated its argument that the figures do not simply depict a preferred embodiment by pointing to any language in the specification that purports to limit the ordinary meaning of “undulating pattern” to require the combination of U-, Y and/or W-shaped members present in figures 5 and 11. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002) (the presumption of ordinary meaning cannot be rebutted “simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification”).
Medtronic argues that the phrase “[i]n keeping with the invention,” as used in the specification’s description of figures 4 and 12-14 (in which “[sjerpentine pattern 30 is made up of a plurality of U-shaped members 31, W-shaped members 32 and Y-shaped members 33”), coupled with the specification’s interchangeable use of the terms “serpentine” and “undulating,” confirms that the “undulating” patterns (and thus “cylindrical elements”) must contain a combination of at least two of the three letter-shaped members and not merely U-shaped members. (D.I. 654 at 5-6) As an initial matter, the specification states that a “serpentine” waveform is only one example of an “undulating pattern,” without exclusion. The court declines to find that “in keeping with the invention” is a term of manifest exclusion or restriction, as would be required to deviate from the ordinary and accustomed meanings of the claim terms. See Teleflex, 299 F.3d at 1324.
The court notes that this is not a case where the specification describes only one way in which the cylindrical elements can be connected. The specification does not preclude the use of non-serpentine “undulating patterns”' — for example, a square or sawtooth wave pattern — so long as the stent remains expandable and longitudinally flexible. The specification does not absolutely require that the interconnecting elements join the cylindrical elements at the peaks or valleys of the waveform, such as would be required where Y-shaped members are present. (col. 3, II. 6-9) (“[pjreferably, all of the interconnecting elements of a stent are joined at either the peaks or the valleys of the undulating structure of the cylindrical elements” (emphasis added)) The figures are not inconsistent with the ordinary meaning of “undulating pattern,” and the language of the specification falls short of definitively limiting the scope of the claims to the particular “undulating patterns” depicted in figures 5 and 11.
b. Claim language
As the court has previously noted, the language of the claims themselves further supports the court’s construction. Claim 12 of the '168 patent separately describes “cylindrical elements having an undulating pattern of peaks and valleys,” and a “weld connection” for attaching the peaks. Similarly, claims 1 and 5 of the '167 patent, as well as claims 12 and 15 of the '133 patent, first describe the cylindrical elements (having an undulating pattern) or “undulating portions” and, thereafter, state that each of these elements is “interconnected” or “connected” to an adjacent cylindrieally shaped element. In view of the use of these terms in the claims, the court reasoned that
[i]t is inconsistent to define “undulating patterns” and “undulating portions” to essentially require Y-shaped “connecting elements,” (e.g., a structural feature identified at trial as the Y-shaped members), when the claims that require “undulating portions” (the claims of the '167, '168, and '133 patents) do not require such a structure. Moreover, to define “cylindrical elements” as having W-shaped and/or Y-shaped members, again, essentially requires “cylindrical elements” to have “connecting elements” when the claim either already requires the presence of “connecting elements” (e.g., claims 1 and 12 of the '154 patent) or when the claim does not require the presence of “connecting elements” ([the aforementioned claims of the '167, 168 and '133 patents]). In other words, Medtronic’s proposed construction (and the construction earlier adopted by the court) serves to either make the “connecting elements” limitation surplusage or impermissibly adds such a limitation. (D.I.615) Phillips itself condones this inference. 415 F.3d at 1314 (recognizing that “[o]ther claims of the patent in question, both asserted and unassert-ed, can also be valuable sources of enlightenment” as to the meaning of claim terms) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)).
c. Prosecution history
There is evidence that both the examiner of the 790 application and ACS understood that Y-shaped members include a component which is a “connector element.” Originally-filed dependant claims 5-7 required that the cylindrical elements included a plurality of Y- and W-shaped members, “some of said U-shaped, Y-shaped, and W-shaped members being interconnected.” (AX-11 at- 20) The examiner rejected the claims as indefinite under 35 U.S.C. § 112, stating that “it is not apparent what applicant considers the connecting elements if the cylindrical elements included such [U-, Y-, and W-]shaped members because it appears that the Y-, and W-shaped members are nothing more than part of the normal serpentine pattern and further including the connecting element attached thereto (particularly, the Y-shaped members).” (AX-11 at 44-45 (emphasis added)) In response, ACS amended claim 5 to require a plurality of U-, Y-, and W-shaped members, “whereby a portion of said Y-shaped members forms said plurality of said connecting elements.” (AX-11 at 118) ACS stated that
[cjlaim 5[was] amended to define the connecting elements as a portion of the Y-shaped members, as suggested by the [e]xaminer. As is clear, the tail portion of the Y-shaped members is the connecting element between the cylindrical elements.
CId. at 119)
The court declines to find that ACS’s statement made in connection with depen-dant claim 5 was a clear indication of an intent to limit the “cylindrical elements” of all claims to a combination of U-, Y-, and/or W-shaped members. See Cannon Rubber Ltd. v. The First Years, Inc., 163 Fed.Appx. 870, 876-77 (Fed.Cir.2005) (non-precedential) (substitution of operational language (“mounting a diaphragm”) with different, but not narrower structural language (a “diaphragm disposed in the body”) in response to an indefiniteness rejection did not evidence a clear disavowal of subject matter that was not completely in the body). This exchange demonstrates that the examiner and the applicant understood that a portion of the Y-shaped members of claims 5-7 is part of the “normal serpentine pattern” of the cylindrical element, and a portion (the tail portion) of the Y-shaped members constitutes the connecting element. Since it is not feasible to divorce the Y-shaped member from its tail portion, it follows that the incorporation of a requirement that the “undulating pattern” of the “cylindrical elements” of the independent claims contain a plurality of Y and/or W-shaped members (in addition to U-shaped members) would necessarily import a “connecting element” limitation into those claims, rendering other limitations to connecting elements redundant or superfluous.
d. Conclusion
Upon review of the issue, the court does not find its construction inconsistent with Phillips. The court finds the language of the specification inadequate to limit the term “undulating pattern” of the cylindrical elements beyond its ordinary meaning. ACS did not attempt to distinguish any prior art based on U-, Y-, and/or W-shaped members, nor did the examiner mention U-, Y-, and/or W-shaped members in connection with any prior art rejection. Further, importing a Y-shaped member restriction into “undulating pattern” necessarily incorporates a connecting element, rendering segregate connecting element limitations superfluous. For all of these reasons, the court finds no error in its construction of “undulating pattern” as “a wave-like pattern,” consistent with the ordinary meaning of that term. Medtronic is not entitled to JMOL of non-infringement based upon an improper claim construction.
Additionally, Medtronic argues that the court’s Markman decision, made after the presentation of evidence on claim construction, was improper. (D.I.691) Medtronic cites CytoLogix Corporation v. Ventana Medical Systems, Inc., 424 F.3d 1168 (Fed.Cir.2005), in which the Federal Circuit stated that “[t]he risk of confusing the jury is high when experts opine on claim construction.” 424 F.3d at 1172. Med-tronic’s reliance on CytoLogix is misplaced, however, as that case confirms that Medtronic’s objection should have been advanced prior to trial. Id. at 1173 (“in this case there is no ground for reversal since there was no objection to the expert testimony as to claim construction ... ”). The CytoLogix Court noted that it appeared, in that case, that the presentation of conflicting expert views on claim construction “created confusion,” which was evidenced by a verdict of infringement “that was not supported by substantial evidence.” Id. at 1172-73. The opposite is the case here and, therefore, any error was harmless error in this case. Medtronic is not entitled to a new trial on this ground. See Lucent Tech., Inc. v. Newbridge Networks Corp., 168 F.Supp.2d 181, 253 (D.Del.2001) (“The timing of the [cjourt’s claim construction decision [at the close of evidence following testimony from both parties’ expert witnesses] did not conflict with Federal Circuit case law, and in the [c]ourt’s view, did not unduly prejudice either party so as to warrant the granting of a new trial”).
2. “Connecting elements” limitation
The court construed “connecting elements” to mean “segments of a stent that extend between adjacent cylindrical elements, connecting them together.” (D.I. 639 at 1884:3-7) Medtronic asserts that it is entitled to JMOL of non-infringement of the '154 patent because no reasonable juror could have found that its stents.have “connecting elements” required by the claims. (D.I. 654 at 16-19) Medtronic introduced evidence at trial that its stents are formed by welding the crowns of individual segments together with a laser in a process known as “autogenous laser fusion,” which does not add any new material to the crowns. (e.g., D.I. 634 at 788:20-793:10) ACS’s expert, Dr. Jerome Segal, M.D. (“Segal”), an interventional cardiologist, agreed that Medtronic’s fusion welding process does not add any new material. (D.I. 633 at 596:11-18) Because it was unrefuted that Medtronic’s fusion welds are not a discrete component, Medtronic argues, there was no evidence that the welds “extend between adjacent cylindrical elements” under the court’s definition. (D.I. 654 at 19)
In response, ACS asserts that the court’s claim construction only requires that the connecting elements are “segments of a stent,” and there was no dispute at trial that Medtronic’s fusion welds are three-dimentional segments of a stent. (D.I. 673 at 22) Medtronic’s own engineer, Mr. Jeffrey Allen (“Allen”), testified that, despite not adding any new material, Medtronic’s fusion welding process results in a new structure — a weld — created from metal borrowed from the two adjacent crowns. The jury was given Medtronic’s design specifications for each of its stents, as well as photographs of Med-tronic’s welds. (AX-104-09; AX-111; AX-113; AX-115-16; AX-119A; AX-899a) Dr. Segal testified for ACS that these specifications and photographs indicate that Medtronic’s fusion welds have minimum dimensions, i.e., they take up space and, therefore, constitute “connecting elements” between the cylindrical elements under the court’s definition. (D.I. 633 at 547:18-550:10) Medtronic’s expert, Dr. Raymond Vito, Ph.D., a biomechanical engineer, confirmed that the weld is three-dimensional (D.I, 635 at 1055:11-16), and testified that “there’s really no room between there for anything to come between the crowns other than the weld” (D.I. 635 at 972:2-3)
The court’s claim construction did not require that the connecting element is a component that is discrete from the cylindrical elements. The court agrees with Medtronic that its definition requires a segment that “extend[s] between” the cylindrical elements, i.e., spaces apart those elements beyond what could result from a simple overlay. However, Medtronic’s design specifications indicate that its fusion welds fill space previously unoccupied by either adjacent crown, for example, a length of 0.040 inches +/0.003, and a width of 0.003 inches for the S7 stent, as described by Allen on cross-examination, and as confirmed by Segal. (D.I. 634 at 844:6-846:8; AX-112; D.I. 633 at 547:18-550:10) Based on the foregoing evidence presented, the court finds that the jury could have reasonably found that Medtronic’s stents have a “segment!] of a stent that extend[s] between adjacent cylindrical elements, connecting them together,” resulting from the blending of metal between the crowns of individual segments. Medtronic’s motion for JMOL of non-infringement of the '154 patent on this ground is denied.
3. “Length less than diameter” limitation
The court construed “cylindrical element” to mean “a radially expandable segment of a stent having a longitudinal length less than its diameter [“L