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NMT Medical, Inc. v. Cardia, Inc; US District Court :PATENT - obviousness; too late to supplement record; claim construction1UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA NMT Medical, Inc., and Children’s Medical Center Corporation, Plaintiffs, v. Civ. No. 04-4200 (JNE/SRN) ORDER Cardia, Inc., Defendant. This is an action for patent infringement brought by NMT Medical, Inc., and Children’s Medical Center Corporation (collectively, Plaintiffs) against Cardia, Inc. Plaintiffs claim that Cardia infringes claims 1-5 and 12 of U.S. Patent No. 5,451,235 (’235 Patent). In August 2006, the Court granted Cardia’s Motion for Summary Judgment, denied Plaintiffs’ Motion for Summary Judgment, and entered summary judgment of noninfringement. Plaintiffs appealed, and the United States Court of Appeals for the Federal Circuit vacated the summary judgment order and remanded for further proceedings. NMT Med., Inc. v. Cardia, Inc., 239 F. App’x 593 (Fed. Cir. 2007). With regard to claims 1-5, the court of appeals concluded that a genuine issue of material fact existed on the issue of whether differences between Cardia’s accused device and the structures disclosed in the ’235 Patent are insubstantial. Id. at 598-99. As to claim 12, the court of appeals concluded that the summary judgment of noninfringement rested on an erroneous claim construction. Id. at 600. The court of appeals also stated that this Court could “reconsider the question of summary judgment for [Plaintiffs] based upon [the Federal Circuit’s] discussion of claim construction.” Id. at 601. On remand, Cardia moves to supplement the record with respect to the issue of obviousness. Plaintiffs contend that that they are entitled to summary judgment on Cardia’s 2 invalidity defenses. Plaintiffs also assert that the Court should award summary judgment of infringement as to claim 12. I. Cardia’s Motion to Supplement the Record Cardia moves to supplement the record with a report prepared by Arthur G. Erdman and dated October 12, 2007. Erdman’s proposed supplemental report addresses the issue of obviousness. Erdman did not previously disclose opinions regarding obviousness, and his proposed supplemental report arrives long after applicable discovery deadlines have passed. Cardia nevertheless asserts that it should be allowed to supplement the record in light of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007). According to Cardia, the Federal Circuit’s teaching-suggestion- motivation test controlled the issue of obviousness when the parties filed their motions for summary judgment, KSR significantly changed the obviousness inquiry, and Cardia was not in a position to argue obviousness in its earlier briefing. In KSR, the Supreme Court stated that the court of appeals had “addressed the question of obviousness in a manner contrary to § 103 and [the Supreme Court’s] precedents.” 127 S. Ct. at 1735. After reviewing several opinions it had issued more than thirty years ago, the Supreme Court acknowledged that the court of appeals had applied the teaching-suggestion- motivation test in many other cases in accord with the principles established by the Supreme Court’s precedent. Id. at 1739-41. Indeed, “[t]here is no necessary inconsistency between the idea underlying the [teaching-suggestion- motivation] test and the Graham analysis.”1 Id. at 1741. Nevertheless, the court of appeals erred in KSR by applying the teaching-suggestion- motivation test as a rigid rule that limits the obviousness inquiry. Id. 1 The Graham analysis comes from Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). 3 Before the Supreme Court announced its decision in KSR, the Federal Circuit had issued opinions that “elaborated a broader conception of the [teaching-suggestion- motivation] test than was applied in [KSR].” Id. at 1743. In one of the cases, DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), cert denied, 127 S. Ct. 2937 (2007), the Federal Circuit stated that “[i]t is difficult to see how our suggestion test could be seen as rigid and categorical given the myriad cases over several decades in which panels of this court have applied the suggestion test flexibly.” 464 F.3d at 1367. Later, the court of appeals reiterated the test’s flexible nature: “Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense.” Id. The Supreme Court’s opinion in KSR and the Federal Circuit’s opinion in DyStar reveal that authority existed when the parties submitted their motions for summary judgment for Cardia to assert and, if necessary, to preserve for appeal its obviousness defense. Under the facts and circumstances of this case, the Court is not persuaded that KSR represents a sound basis for Cardia to supplement the record. The Court therefore denies Cardia’s motion to supplement and declines to consider the proposed supplemental report. II. Plaintiffs’ Motion for Summary Judgment A. Invalidity “An issued patent is presumed to be valid, and the burden of establishing invalidity as to any claim of a patent rests upon the party asserting such invalidity. Clear and convincing evidence is required to invalidate a patent.” Impax Labs., Inc. v. Aventis Pharm. Inc., 468 F.3d 1366, 1378 (Fed. Cir. 2006) (citation omitted); see 35 U.S.C. § 282 (2000). In its Answer to Plaintiffs’ Complaint, Cardia alleged that “[t]he ’235 Patent is invalid for failure to meet the ‘Conditions of Patentability’ set forth in one or more provisions of 35 U.S.C. 4 §§ 102, 103 and 112.” During discovery, Plaintiffs served an interrogatory that asked for the factual and legal basis of Cardia’s invalidity contentions. Cardia responded by asserting that claims 1-5 of the ’235 Patent are invalid due to anticipation or obviousness. Cardia’s response did not mention claim 12. Plaintiffs now move for summary judgment on Cardia’s invalidity defenses. 1. Claims 1-5 Plaintiffs contend that summary judgment is warranted on Cardia’s anticipation defense to claims 1-5 because Cardia has no evidence that a prior art reference anticipates claims 1-5. See SRAM Corp. v. AD-II Eng’g, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006) (stating that anticipation is a question of fact), cert. denied, 127 S. Ct. 2433 (2007). In support, Plaintiffs point to Cardia’s conclusory interrogatory answer and Cardia’s reliance on the testimony of an individual who is not an expert in the relevant field. Cardia responds by asserting that two prior art references anticipate claims 1-5. Cardia does not, however, explain how each and every limitation of claims 1-5 is found in the prior art references. The Court therefore grants Plaintiffs’ motion as it relates to Cardia’s anticipation defense to claims 1-5. See Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“[A] claim is anticipated if each and every limitation is found either expressly or inherently in a single prior art reference.”). Plaintiffs also assert that summary judgment on Cardia’s obviousness defense to claims 1-5 is appropriate because Cardia has no evidence to support the defense. See KSR, 127 S. Ct. at 1745-46; Pandrol USA, LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005) (“Obviousness is a question of law premised on underlying findings of fact.”). Cardia does not 5 respond to this argument in its opposition to Plaintiffs’ motion. 2 Because Cardia has not supported its obviousness defense, the Court grants Plaintiffs’ motion to the extent it relates to the defense. 2. Claim 12 Plaintiffs maintain that summary judgment on Cardia’s invalidity defenses to claim 12 is warranted. In support, they note that Cardia did not identify any factual or legal basis for invalidity defenses to claim 12 in response to Plaintiffs’ interrogatories and that Cardia relies on the testimony of an individual who is not an expert in the relevant field. Cardia responds that claim 12 is indefinite and fails to satisfy the written description requirement. The Court considers Cardia’s contentions in turn. “A determination of whether a claim recites the subject matter that the applicant regards as its invention and is sufficiently definite so as to satisfy the requirements of 35 U.S.C. § 112, ¶ 2, is a legal conclusion . . . .” Aero Prods. Int’l, Inc. v. Intex Recreation Corp., 466 F.3d 1000, 1015 (Fed. Cir. 2006) (footnote omitted). “The reviewing tribunal must determine whether a person experienced in the field of the invention would understand the scope of the claim when read in light of the specification.” Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1369 (Fed. Cir. 2006). “If a claim is not amenable to construction, the claim is invalid as 2 In a letter to the Court submitted after remand, Cardia asserts that claims 1-5 are obvious pursuant to KSR. The Court declines to consider this argument. See Biotec Biologische Naturverpackungen GmbH & Co. KG v . Biocorp, Inc., 249 F.3d 1341, 1353 (Fed. Cir. 2001) (“The public interest in invalidating invalid patents does not override the well established procedure requiring the nonmovant to come forward with evidence sufficient to negate the movant’s position.”). Having raised the issue of obviousness in its Answer and interrogatory responses, Cardia presumably believed its obviousness defense was warranted. See Fed. R. Civ. P. 11(b)(2); Fed. R. Civ. P. 26(g)(2)(A). As noted above, authority existed when the parties submitted their motions for summary judgment for Cardia to assert and, if necessary, to preserve for appeal its obviousness defense. Cardia nevertheless omitted obviousness from its opposition to Plaintiffs’ motion. Accordingly, the Court declines to consider Cardia’s belated argument regarding obviousness as to claims 1-5. See Biotec Biologische, 249 F.3d at 1353-55. 6 indefinite under 35 U.S.C. § 112, ¶ 2. If a claim is amenable to construction . . . the claim is not indefinite.” Aero Prods. Int’l, 466 F.3d at 1016 (citation omitted). According to Cardia, “the Patent Office determined that without the specific types of connections being identified, [claim 12] is indefinite.” The Court rejects this argument. See NMT Med., 239 F. App’x at 600. One reasonably skilled in the art would understand claim 12 to have pins and collars directly or indirectly connected to occluders. See id. Accordingly, the Court grants Plaintiffs’ motion as it relates to Cardia’s defense that claim 12 is indefinite. Cardia next argues that if claim 12 is construed to cover a ball and socket, then claim 12 fails to comply with the written description requirement. See 35 U.S.C. § 112, ¶ 1. The Court rejects this argument. See Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1366 (Fed. Cir. 2004) (“Our precedent has emphasized that the disclosure in the written description of a single embodiment does not limit the claimed invention to the features described in the disclosed embodiment.”); Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001) (“Our case law is clear that an applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”). The issue of whether a patent complies with the written description requirement presents a question of fact. Kao Corp. v. Unilever United States, Inc., 441 F.3d 963, 967 (Fed. Cir. 2006). “To fulfill the written description requirement, the patent specification must describe an invention in sufficient detail that one skilled in the art can clearly conclude that the inventor invented what is claimed.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed. Cir. 2003). Here, claim 12 calls for a ball and collar assembly, and the patent contains several descriptions of such assemblies. Cardia has not raised a genuine issue of material fact as to whether the ’235 Patent complies with 7 the written description requirement. The Court therefore grants Plaintiffs’ motion as it relates to Cardia’s defense that claim 12 fails to comply with the written description requirement.3 B. Infringement Plaintiffs move for summary judgment of infringement as to claim 12. An infringement analysis has two steps. First, the court determines the meaning and scope of the patent claims asserted to be infringed. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). Second, the court compares the properly construed claims to the device accused of infringing. Id. Literal infringement of a claim exists if each claim limitation is found in the accused device. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1345 (Fed. Cir. 2002). “Even if one or more of the claim limitations are not literally present in the accused device, thus precluding a finding of literal infringement, the claim may still be held infringed if equivalents of those limitations are present.” Id. An element in an accused product is equivalent to a claim limitation if it performs substantially the same function in substantially the same way to achieve substantially the same result as the claim limitation. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 812-13 (Fed. Cir. 2002). The issue of infringement presents a question of fact. Id. at 812. In this case, the parties do not dispute that Cardia’s accused device contains many of claim 12’s limitations. The Court considers the disputed limitations. Claim 12 calls for “a connector means for fastening the first occluder to the second occluder said connector means comprising a ball and collar assembly.” The parties dispute whether Cardia’s accused device contains the ball and collar assembly. In Cardia’s accused device, each occluder is attached to a pin. Ball headings are at the other ends of the pins. The 3 On remand, Cardia contends that claim 12 is obvious. For the reasons set forth above, the Court declines to consider Cardia’s belated argument regarding obviousness as to claim 12. 8 pins are connected by a central sleeve or collar into which the ball headings fit. NMT Med., 239 F. App’x at 596, 599 (“Cardia’s device uses two balls in a central collar . . . .”). Viewed in the record in the light most favorable to Cardia, the record reveals that Cardia’s accused device contains the ball and collar assembly. 4 Claim 12 requires “a ball and collar assembly for allowing relative movement between the first occluder and the second occluder when said occluders are in the expanded configuration.” Cardia contends that claim 12 requires that the relative movement take place after implantation. The Court rejects this argument for the reasons set forth in the construction of claim 1 in the August 2006 Order. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims.”). Finally, Cardia contends that its accused device does not satisfy claim 12’s “relative movement” limitation. Asserting that the claim is a means-plus- function claim, Plaintiffs construe the movement to require translation. For the reasons set forth in the August 2006 Order, claim 12 is not a means-plus- function claim. The Court does not discern any basis to construe “relative movement” as a particular type of movement. Accordingly, Cardia’s accused device satisfies claim 12’s “relative movement” limitation: [T]he two pins of the accused device can independently “rotate” (spin within the socket in a pinwheeling motion) and “pivot” (move up-and-down or side-to-side in a hinge- like motion, like that of a human shoulder joint.) The accused device's 4 Cardia also opposed Plaintiffs’ motion on the ground that claim 12 required a direct connection between an occluder and the collar. Properly construed, claim 12 does not require a direct connection. NMT Med., 239 F. App’x at 600. Accordingly, Cardia’s accused device satisfies claim 12’s “connected” element. Id. at 597 (noting indirect connection in the accused device between the collar and the occluders). 9 connector allows “translation” (the ball moves deeper into the collar or the reverse) only to a minimal extent, due to manufacturing tolerances. NMT Med., 239 F. App’x at 596. In short, the record, viewed in the light most favorable to Cardia, reveals that each limitation of claim 12 is found in Cardia’s accused device. The Court therefore grants Plaintiffs’ motion as it relates to the issue of infringement of claim 12. III. Conclusion Based on the files, records, and proceedings herein, and for the reasons stated above, IT IS ORDERED THAT: 1. Cardia’s Motion to Supplement the Record [Docket No. 105] is DENIED. 2. Summary judgment of infringement as to claim 12 of the ’235 Patent is granted to Plaintiffs. 3. Cardia’s invalidity defenses to claims 1-5 and 12 of the ’235 Patent are stricken. Dated: November 8, 2007 s/ Joan N. Ericksen JOAN N. ERICKSEN United States District Judge |
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