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NMT Medical, Inc. v. Cardia, Inc; US District Court :PATENT - obviousness; too late to supplement record; claim construction

1
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
NMT Medical, Inc., and Childrens 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 Childrens
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 Cardias 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. Appx 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 Cardias 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 Circuits]
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 Cardias
2
invalidity defenses. Plaintiffs also assert that the Court should award summary judgment of
infringement as to claim 12.
I. Cardias Motion to Supplement the Record
Cardia moves to supplement the record with a report prepared by Arthur G. Erdman and
dated October 12, 2007. Erdmans 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 Courts decision in KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007).
According to Cardia, the Federal Circuits 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
Courts] 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 Courts 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 tests 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 Courts opinion in KSR and the Federal Circuits 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 Cardias 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 Cardias invalidity contentions. Cardia responded by asserting that
claims 1-5 of the 235 Patent are invalid due to anticipation or obviousness. Cardias response
did not mention claim 12. Plaintiffs now move for summary judgment on Cardias invalidity
defenses.
1. Claims 1-5
Plaintiffs contend that summary judgment is warranted on Cardias 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 Engg, 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 Cardias conclusory interrogatory answer and Cardias 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 Cardias anticipation defense to claims 1-5. See Celeritas Techs., Ltd. v.
Rockwell Intl 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 Cardias 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 Cardias 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 Cardias 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. Intl, 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. Intl Trade Commn, 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
movants 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 Cardias 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. Intl, 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. Appx 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 Cardias 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 Intl, Inc. v. Intl Trade Commn, 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
Cardias 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), affd, 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 Engg 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. Intl, 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 Cardias accused device contains many of claim 12s 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 Cardias accused device contains the ball and collar assembly. In Cardias 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 Cardias 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. Appx at 596, 599 (Cardias device uses two balls in a central collar . . . .). Viewed in the
record in the light most favorable to Cardia, the record reveals that Cardias 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 12s 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, Cardias accused
device satisfies claim 12s 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. Appx at 600. Accordingly, Cardias accused device
satisfies claim 12s 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. Appx at 596.
In short, the record, viewed in the light most favorable to Cardia, reveals that each
limitation of claim 12 is found in Cardias 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. Cardias 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. Cardias 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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