MINNEAPOLIS PERSONAL INJURY ATTORNEY  
attorney Michael E. Douglas Attorney at Law
  Personal Injury Attorney
  St. Paul Workers Compensation Lawyer work comp attorney
 > About Me
   :: My Commitment
   :: Our Community
   
 > Legal Practice Areas
  twin cities comsumer lawPersonal Injury
   :: Traffic Accidents
   :: Medical Malpractice
   :: Social Security Disability
   :: Premises Liability
   :: Wrongful Death
   :: Dog Bite
   :: Back/Spinal/Neck Injuries
   :: Whiplash
   :: Defective Medical Devices
   :: Defective Drugs
  Minnesota Personal InjuryWorkers Compensation
  St. Paul personal injuryConsumer Law
   :: Debt Collection
   :: Repossessions
   :: Foreclosures
   :: Loan, Credit, Banking
   :: Arbitration Agreements
   :: Deception and Fraud
   :: Auto Fraud / Lemon Law
   :: Warranties
   :: Predatory Lending
   
 > Contact Us
   :: Contact Us
 

Law Offices of Michael E. Douglas
P.O. Box 251551
Woodbury, Minnesota 55125-6551
   

 Saint Paul Lawyer
 
 mdouglas@injurylawtwincities.com

 

Spectralytics, Inc. v. Cordis Corp.: US District Court : PATENT - claim construction; sized; carried; anticipation; obviousness; trade secrets; unfair competition

-1-
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
SPECTRALYTICS, INC.,
Plaintiff,
v.
CORDIS CORPORATION and NORMAN
NOBLE, INC.,
Defendants.
Case No. 05-CV-1464 (PJS/RLE)
ORDER ON CROSS-MOTIONS FOR
SUMMARY JUDGMENT
Matthew J. Goggin, Alan G. Carlson, R.J. Zayed, Dennis C. Bremer, and Russell J.
Rigby, CARLSON CASPERS VANDENBURGH & LINDQUIST, P.A., for plaintiff
Spectralytics, Inc.
Gregory L. Diskant, Michael J. Timmons, and Richard O. Jackson, PATTERSON,
BELKNAP, WEBB & TYLER LLP; Joseph W. Anthony and Courtland C. Merrill,
ANTHONY OSTLUND & BAER, P.A., for defendant Cordis Corporation.
James B. Niehaus and Christopher C. Koehler, FRANTZ WARD LLP; John Edward
Connelly and Lee M. Pulju, FAEGRE & BENSON LLP, for defendant Norman Noble,
Inc.
I. BACKGROUND
On October 24, 1996, Gary Gustafson filed a patent application covering an apparatus for
cutting metal tubing with a laser. The application issued on December 22, 1998 as United States
Patent No. 5,852,277 (the 277 patent). The patented apparatus is specifically designed for
cutting stents, which are short, thin-walled, perforated sections of metal tubing that are implanted
in fluid-carrying tubes in the body generally arteries, but also veins, ducts, and ureters, among
other things to keep those tubes open.
1Cordis Corporation is now affiliated with Johnson & Johnson, after a merger in 1996
between Johnson & Johnson Interventional Services (JJIS) and the then-independent Cordis
Corporation. The Court refers to JJIS as Cordis, which reflects the current corporate reality.
2In addition to distributing stents made by Noble, Cordis distributes stents that it
manufactures in-house.
3The parties call the allegedly infringing Noble machine the follower assembly. The
Court will generally refer to it simply as the accused device, machine, or apparatus.
-2-
Gustafson assigned his rights in the 277 patent to plaintiff Spectralytics, Inc.
Spectralytics makes stent-cutting machines, but it has not been very successful in the stent
business, either as a supplier of stent-cutting machines or as a manufacturer of stents. Defendant
Norman Noble, Inc. (Noble), by contrast, has been a very successful manufacturer of stents,
which it cuts on machines made by Noble itself. Noble sells stents to defendant Cordis
Corporation (Cordis).1 Cordis is one of the countrys leading stent distributors, with annual
sales in the hundreds of millions of dollars.2
Spectralytics believes that Noble has not come by its success honestly. Specifically,
Spectralytics contends that at least one model of Nobles stent-cutting machine infringes the 277
patent.3 Spectralytics is therefore suing both Noble and Cordis for patent infringement.
Spectralytics also contends that Noble stole trade secrets related to the design of stent-cutting
machines trade secrets that Noble allegedly became aware of in 1995 or 1996 when it was
negotiating a possible acquisition of Spectralytics. Spectralytics is therefore suing Noble for
theft of trade secrets and unfair competition.
All of the parties move for summary judgment. Spectralytics asks the Court to rule that
the accused Noble machines literally infringe claim 1 of the 277 patent, that certain disputed
references are not part of the prior art, and that claim 1 of the 277 patent is not invalid as either
Claim 1 of the 277 patent is the only claim s 4 eriously at issue in this suit. The Court will
therefore sometimes use the phrase the 277 patent as shorthand for claim 1 of the 277
patent.
5Count II of the first amended complaint alleges that Noble infringes United States Patent
No. 6,114,653 (the 653 patent), a method patent that is related to the 277 patent. Spectralytics
intends to dismiss Count II but has not moved for dismissal because the parties have been unable
to agree to a stipulation with respect to the 653 patent. See Goggin Decl. Exs. 8-12 [Docket
No. 131]. The Court addresses issues related to Count II at the end of this opinion.
6Cordis and Noble have divided the task of briefing patent-law issues, with Cordis
focusing on invalidity and infringement, and Noble addressing whether disputed references are in
the prior art. But each party expressly relies on the others arguments. In discussing their
arguments, the Court will generally refer only to the party that briefed a particular issue, even
though the arguments may nominally be advanced by Cordis and Noble together. The Court
expresses its appreciation to all parties for striving to avoid duplication in the briefing.
-3-
anticipated or obvious.4 Spectralytics Mot. Partial S.J. [Docket No. 93]; Spectralytics Mem.
Supp. Mot. Partial S.J. (Spectralytics SJ Mem.) [Docket No. 94]. Cordis moves for summary
judgment in its favor on some of the same issues infringement, obviousness, and the status of
disputed references and on the side issue of whether claims based on United States Patent
No. 6,114,653 (the 653 patent), which Spectralytics no longer asserts, should be dismissed with
or without prejudice.5 Cordis Mot. S.J. [Docket No. 103]; Cordis Mem. Supp. Mot. S.J. (Cordis
SJ Mem.) [Docket No. 107]. Noble moves for summary judgment on one patent-law issue
raised by Spectralytics the status of certain disputed references and on Spectralyticss
trade-secrets and unfair-competition claims.6 Noble Mot. S.J. [Docket No. 88]; Noble Mem.
Supp. Mot. S.J. (Noble SJ Mem.) [Docket No. 90].
For the reasons given below, the Court grants summary judgment to Spectralytics that the
277 patent is not invalid as anticipated. The Court denies summary judgment to Cordis that the
277 patent is invalid as obvious although, as the Court will explain, the Court believes that
7Cordis, in a single paragraph of its summary-judgment brief, contends that Spectralytics
is barred from showing infringement under the doctrine of equivalents. Cordis SJ Mem. at 36-
37. Cordiss briefing is not adequate to permit the Court to address this issue, and thus the Court
declines to address it.
-4-
Cordis will likely prevail on this issue at trial. The Courts holdings with respect to the
subsidiary questions about the content of the prior art are described below. The Court denies
both Cordiss and Spectralyticss motions for summary judgment with respect to infringement.7
The Court denies summary judgment to Noble on Spectralyticss trade-secrets and unfaircompetition
claims although, as also explained below, the Court expects that Noble will
prevail on these claims at trial. Finally, the Court grants Cordiss motion with respect to
dismissal of claims related to the no-longer-asserted 653 patent.
II. ANALYSIS
A. Standard of Review
Summary judgment is appropriate if the pleadings, the discovery and disclosure
materials on file, and any affidavits show that there is no genuine issue as to any material fact and
that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). A dispute over
a fact is material only if its resolution might affect the outcome of the suit under the governing
substantive law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute over a
fact is genuine only if the evidence is such that a reasonable jury could return a verdict for
either party. Ohio Cas. Ins. Co. v. Union Pac. R.R., 469 F.3d 1158, 1162 (8th Cir. 2006). In
considering a motion for summary judgment, a court must view the evidence and the inferences
that may be reasonably drawn from the evidence in the light most favorable to the non-moving
party. Winthrop Res. Corp. v. Eaton Hydraulics, Inc., 361 F.3d 465, 468 (8th Cir. 2004).
-5-
B. The 277 Patent
1. Claim Construction
In November 2006, the parties filed a joint claim-construction statement in which they set
forth agreed-upon constructions for two claim terms in the 277 patent (as well as one claim term
in the no-longer-asserted 653 patent). Joint Claim Constr. Stmt. [Docket No. 45]. The parties
did not identify any claim language that remained in dispute, and they agreed that a claimconstruction
hearing was unnecessary. Id. at 5.
As it turns out, however, two claim terms are in dispute. Spectralyticss infringement
case turns largely on the meaning of the words sized to be in the phrase the bushing having a
central bore which is sized to be slightly greater than an outside diameter of the stock tubing.
277 Pat. col. 6:20-23. And Cordiss invalidity case depends in part on the meaning of the words
rigidly carried on in the phrase a workpiece fixture rigidly carried on the cutting tool in a
fixed spatial arrangement . . . . Id. col. 6:8-9. The parties argue in their summary-judgment
briefs for their favored claim constructions.
Courts, not juries, construe patent claims. Markman v. Westview Instruments, Inc., 517
U.S. 370, 391 (1996). Language in a particular claim must be construed in the context of both
that claim and the entire patent, including the specification. Phillips v. AWH Corp., 415 F.3d
1303, 1313 (Fed. Cir. 2005) (en banc). Indeed, the specification, read in light of the prosecution
history, is the primary basis for construing patent claims. Id. at 1315. Courts may also rely on
extrinsic evidence everything other than the patent and its prosecution history but that
evidence is secondary to the intrinsic evidence. Id. at 1317.
-6-
In general, claim language means what that language would have meant, ordinarily and
customarily, to a person of ordinary skill in the art at the time the patent application was filed.
Id. at 1312-13. In some cases, the ordinary and customary meaning of claim language to a person
of ordinary skill in the art may be identical to the meaning of that language to a lay person who is
not skilled in the art. Id. at 1314.
It appears likely that, for purposes of this case, the person of ordinary skill in the art is a
mechanical engineer. Spectralytics has agreed, for purposes of its affirmative motion, with
Cordiss proposed definition that a person of ordinary skill in the art is a person with an
undergraduate degree in mechanical engineering or equivalent technical training and/or an
equivalent amount of industry experience and familiarity with tooling and fixturing.
Spectralytics SJ Mem. at 33. Meanwhile Cordis has agreed, for purposes of its affirmative
motion, with Spectralyticss proposed definition that a person of ordinary skill in the art is
someone with at least a Bachelor of Science degree in mechanical engineering (including
materials science or metallurgy), industrial engineering, or physics, or an equivalent amount of
industrial experience and training, and at least one of (a) the use of industrial (cutting) lasers and
(b) the practice of cutting stents. Cordis SJ Mem. at 12.
Given these counter-concessions, it seems that for present purposes a person of
ordinary skill in the art is anyone who meets either partys definition of such a person. Cordiss
definition may be a little broader than Spectralyticss, but the parties definitions are very close,
and nothing seems to turn on the differences between them. The parties have submitted the
testimony of a number of witnesses on the claim-construction issues. With one exception, the
Court agrees that witnesses whom the parties have characterized as persons of ordinary skill in
-7-
the art are such persons, and the Court has considered those witnesses testimony as evidence of
the meaning of the 277 patents claims. The exception is Spectralyticss expert Larry Nixon,
who whatever else his qualifications is clearly not a person of ordinary skill in the art of
mechanical engineering. See Nixon Decl. Ex. 1 at 20-21 [Docket No. 104] (describing Nixons
educational and professional background).
Spectralyticss argument with respect to the phrase sized to be is based mainly on its
interpretation of Federal Circuit case law. See Spectralytics SJ Mem. at 15-17. Spectralytics also
supports its argument with the testimony of two mechanical engineers, the testimony of Nixon (a
lawyer who, as noted, is not a person of ordinary skill in the art), and an analogy based on
[c]ommon sense and real world experience . . . . Id. at 19-20.
Cordiss argument about sized to be is phrased in terms of the distinction between a
clearance fit and an interference fit, but Cordiss witnesses explain that distinction in terms
that any educated layperson could understand. See Cordis Mem. Resp. Spectralytics Mot. S.J.
(Cordis SJ Opp.) at 13-17 [Docket No. 120]. Speaking very roughly, and using the example of
an object placed inside a tube: The fit between the object and the tube is a clearance fit if there
is space or clearance between the outer surface of the object and the inner surface of the tube,
such that the object can move around inside the tube. Thus, if a one-inch-square sponge is
inserted into a two-inch-square tube, the two objects will have a clearance fit. The fit between
the object and the tube is an interference fit if the outer surface of the object touches the inner
surface of the tube, such that there is friction or interference between the object and the tube.
Thus, if a three-inch-square sponge is compressed into a two-inch-square tube, the two objects
will have an interference fit; the object will not move around inside the tube.
-8-
The parties arguments with respect to the phrase rigidly carried on are even less
technical. The words carried on are ordinary English words, and both Spectralytics and Cordis
base their proposed claim constructions primarily on the language of the 277 patent itself.
Spectralytics SJ Mem. at 29-30; Cordis SJ Mem. at 15-17.
a. Disputed Term 1: sized to be
The Court construes the term the bushing having a central bore which is sized to be
slightly greater than an outside diameter of the stock tubing as follows:
A bushing has a central bore which is sized to be slightly greater
than an outside diameter of the stock tubing if, after the stock
tubing has been inserted into the bushings central bore, the bores
inner diameter is slightly greater than the stock tubings outer
diameter.
Cordis argues that this term should be construed to refer to a machine designers
intentions rather than to the machines actual operation. Cordis SJ Mem. at 35 (The claim is
addressed to the selection of a bushing that is intended to be larger in diameter than the
tubing . . . .). According to Cordis, any other construction reads the term sized to be out of
the claim. Id.
The Court disagrees. The word sized, like the word painted (or any other pastparticipial
adjective), can describe an items current state. Consider: Last week, the body shop
painted my car. My car is now painted. Cordiss proposed construction overlooks this simple
fact, and fails to account for the two words after sized: to be. Although sized is a pastparticipial
adjective, to be is an infinitive, and raises the question: sized to be slightly greater
when? According to Cordis, sized to be slightly greater must mean having been sized to be,
before assembly, slightly greater. But nothing in the claim language or the prosecution history
-9-
supports this implausible reading. Given that the patent covers a device which, in operation,
requires tubing to be inserted inside a bushing, it makes more sense to read sized to be slightly
greater to mean having been sized to be (i.e., having a size that is), when assembled, slightly
greater.
To support its proposed construction, Cordis asserts that claim 1 is about a clearance fit,
and not an interference fit. Id. at 36. Cordis may be right but this is a noninfringement
argument, not an argument supporting Cordiss strained claim construction. Even as construed
by the Court, this term of claim 1 requires that the central bores inner diameter be slightly
greater than the stock tubings outer diameter. According to Cordis, in the accused machine,
after the stock tubing has been inserted into the bushings central bore, the bores inner diameter
is identical in size to and not slightly greater than the tubings outer diameter. Id. at 31-32.
If Cordis is correct (and, as explained below, that will be for the jury to determine), then Cordiss
accused machine does not literally infringe. But infringement must be measured when the device
is assembled; it does not depend on subjective, pre-assembly intentions.
b. Disputed Term 2: rigidly carried on
The Court construes the term workpiece fixture rigidly carried on the cutting tool as
follows:
The workpiece fixture is rigidly carried on the cutting tool if the
workpiece fixture is both rigidly attached to and supported by the
cutting tool.
Spectralytics contends that the term rigidly carried on means supported by, hanging
from, or suspended from. Spectralytics SJ Mem. at 29. The last five words of Spectralyticss
proposed construction are superfluous: to hang from or be suspended from something is just
-10-
one way to be supported by that thing. (It is to be supported from above.) Because supported
by is broader than, and entirely encompasses, hanging from and suspended from,
Spectralyticss proposed construction boils down to this: rigidly carried on means supported
by. The Court agrees with this, as far as it goes, but believes that it is too broad given the actual
claim language and the intrinsic evidence.
The Court does not, however, adopt Cordiss proposed construction. Cordis argues that
rigidly carried on the cutting tool means rigidly mounted or affixed to the laser cutting tool.
Cordis SJ Opp. at 24. That, too, is fine as far as it goes. But Cordis is cagey about the meaning
of its proposed construction. On the one hand, Cordis says that the disputed claim language
covers a workpiece fixture that is rigidly mounted or affixed to the laser cutting tool. Id.
(emphasis added). On the other hand, Cordis apparently believes that under this construction, a
workpiece fixture would be carried on a laser cutting tool even if the fixture were not attached
to the laser cutting tool, but instead the fixture and the tool were each rigidly attached to a third
structure, such as the top of a table. Cordis SJ Mem. at 18 (comparing the patented machine to
apparatuses in which a cutting tool and a workpiece fixture are part of a unified tool frame and
explaining that [t]he connection between these structures [i.e., the workpiece fixture and the
cutting tool] is rigid because the tool frame joins them together as a single piece).
Cordiss apparent interpretation of its own proposed claim construction is thus
inconsistent with that construction. If a workpiece fixture and a cutting tool were attached only
indirectly say, by virtue of each being mounted to the top of a table then the workpiece
fixture would not be mounted or affixed to, in Cordiss words, the laser cutting tool. Rather,
the workpiece fixture would be mounted to the table, as would the cutting tool, and the table
-11-
would support both the fixture and the cutting tool. While the effect of such an arrangement (so
long as both the workpiece fixture and cutting tool were sufficiently rigidly connected to the
table) would be to create a rigid linkage between the cutting tool and the workpiece fixture so
that if one moved, both would move, the 277 patent claims only a particular method of
achieving this result: attaching the workpiece fixture to the cutting tool in such a way that the
cutting tool supports the fixture.
The Courts claim construction is supported by the plain language of the claim and the
intrinsic evidence. Construing the disputed claim language involves little more than the
application of the widely accepted meaning of commonly understood words, and therefore
general purpose dictionaries may be helpful. Phillips, 415 F.3d at 1314.
To begin with, the verb to carry means to hold or support while moving; bear.
American Heritage Dictionary of the English Language 285 (4th ed. 2000) (AHD Fourth)
(entry 1 for transitive verb carry); see also Websters Third New International Dictionary 343
(1981) (defining carry to mean to move while supporting (as in a vehicle or in ones hands or
arms)). Carry also means [t]o support the weight or responsibility of, as in a beam that
carries the floor . . . . AHD Fourth 285 (entry 7b for transitive verb carry). Thus, a workpiece
fixture is carried on a cutting tool only if the cutting tool supports i.e., bears the weight of
the fixture.
This interpretation is consistent with both uses of the words carried on in claim 1 of the
277 patent. Claim 1 covers not just a workpiece fixture rigidly carried on the cutting tool, but
also a generally horizontal bushing carried on the fixture body . . . . 277 Pat. col. 6:8,
col. 6:19-20. Figures 2 through 4 of the 277 patent all show a fixture body in which the
-12-
horizontal bushing is embedded; the fixture body thus necessarily supports the bushing that
claim 1 describes as carried on the fixture body.
Further, the workpiece fixture is rigidly carried on the cutting tool only if the fixture
and the cutting tool are, according to the Courts claim construction, rigidly attached to each
other. This rigid-attachment requirement is evident from the claim language as well as the
various descriptions of the patented invention found throughout the 277 patent specification.
For instance, the Background of the Invention section of the specification ends with this
paragraph:
The apparatus of this invention comprises a workpiece fixture for
holding the tubing beneath the laser cutting tool and for supporting
the tubing in a cantilever fashion. The workpiece fixture is rigidly
affixed to the laser cutting tool. Thus, bumping either the cutting
tool or the fixture does not disturb the accuracy of the cut part as
the two move together, again increasing the accuracy and yield of
the manufacturing method of this invention.
277 Pat. col. 2:19-27 (emphasis added).
Other passages in the specification, though using different language to describe the
invention, are consistent with the quoted paragraph and the Courts claim construction. In
describing the drawings, the specification says that Figure 1 shows the workpiece fixture
attached to the cutting tool, while Figure 2 shows the laser cutting tool and conjoined
workpiece fixture . . . . 277 Pat. col. 2:36-41 (emphasis added). The specification also says
that the [f]ixture body 28 is rigidly mounted or fixed to laser cutting tool 2 by a support
structure . . . . Id. col. 3:54-55. The support structure is adjustable, allowing the fixture body to
be moved relative to the cutting tool, but once the adjustments are made the fixture body 28
thereafter is directly carried on laser cutting tool 2 in a fixed, spatial relationship. Id. col. 3:67
8The prosecution history of the 277 patent is in Exhibit 11 of the Rigby Declaration
[Docket No. 113].
-13-
to col. 4:1. Further, the patent contrasts the claimed invention with lathe-type machines found in
the prior art, in which the cutting tool and the workpiece support are not directly coupled to one
another. Id. col. 1:58 (emphasis added).
The prosecution history likewise supports the Courts claim construction. The patent
examiner rejected an earlier version of claim 1 as anticipated by Japanese patent 8-187595 to
Sato. PTO Office Action (Mar. 4, 1998) at 3.8 In explaining this rejection, the examiner said
that Sato shows a workpiece fixture . . . rigidly carried on the cutting tool in a fixed spatial
arrangement . . . . Id. Sato depicts a downward-facing laser cutting head with a workpiece
fixture parallel to the cutting head and attached to the cutting head by a horizontal arm that is
attached directly above the cutting head. Rigby Decl. Ex. 8 at SP 51876. The cutting head
travels horizontally along a carriage, and when the cutting head moves, the attached workpiece
fixture moves with it. The workpiece fixture shown in Sato is therefore, in the words of the
Courts claim construction, both rigidly attached to and supported by the cutting tool.
The patent examiner also rejected an earlier version of claim 1 as anticipated by United
States Patent No. 5,026,965 to Ohe. In doing so, the examiner said that Ohe showed a
workpiece fixture . . . rigidly carried on the cutting tool in a fixed spatial arrangement . . . . PTO
Office Action (Mar. 4, 1998) at 4. Ohe depicts a laser cutting head attached directly to a bracket
through which tubing travels as the laser cuts holes in the tubing. Merrill Decl. Ex. 39 [Docket
No. 108]. Like Sato, Ohe shows a workpiece fixture (the bracket) that is both rigidly attached to
and supported by the cutting tool.
-14-
2. Infringement
The parties agree that the accused device meets all of the limitations of claim 1 of the
277 patent save the requirement that the bushing have a central bore which is sized to be
slightly greater than an outside diameter of the stock tubing. 277 Pat. col. 6:21-23; Cordis SJ
Mem. at 33-36; Spectralytics SJ Mem. at 13-20. Under the Courts construction of claim 1, to
meet this limitation, the bushing in the accused device must, after the stock tubing is inserted,
have an inner diameter that is slightly greater than the outer diameter of the tubing.
Spectralytics argues that the inner diameter of the bushing in the accused device is
necessarily greater than the outer diameter of the inserted tubing; otherwise, says Spectralytics,
the tubing would not fit into the bushing. Spectralytics SJ Mem. at 16 (In the [accused] stent
cutting machine, the Teflon core [i.e., the bushing] and the tube cannot occupy the same space.);
id. at 19 (Defendants have simply taken advantage of the elastic properties of Teflon to create a
snug fit between the bushing and the stock tubing. They have not eliminated the engineering
requirement that there be clearance between the tube and bushing . . . .) (footnote omitted).
Cordis, however, contends that the bushings inner diameter and the tubings outer diameter are
exactly the same size. Cordis SJ Mem. at 25, 31; Cordis SJ Opp. at 18 (In practice, because of
the properties of Teflon, the Norman Noble bushing is exactly the same size as the tubing when
the tubing is being cut.).
The Court finds that the relative sizes of the bushings inner diameter and the tubings
outer diameter are disputed questions of fact. On the one hand, the Court has no reason to reject
the testimony of Cordiss witnesses on the subject. See Merrill Decl. 1 Ex. 27 at 32 (Miller
Dep.) [Docket No. 108] (As we got into the Teflon we actually brought the clearance down to
-15-
zero. . . .); id. at 105-07; Merrill Decl. 2 Ex. 64 at 78 (Przeracki Dep.) [Docket No. 121]
(You want it [i.e., the bushing] to be the same size as the tubing.). On the other hand, the
Court also has no reason to reject the testimony of Spectralyticss expert, Patrick Madsen, who is
a person of ordinary skill in the art, and who testified that when the accused device is in use, the
central bore of the bushing must necessarily be slightly greater than the diameter of the tubing.
Otherwise the tubing could not slide through the bushing. Rigby Decl. Ex. 96 at 8 (Suppl.
Madsen Report) [Docket No. 95]. Madsen bases this conclusion on his belief that a basic law
of physics would prevent tubing from sliding through a bushing if the tubings outer diameter
equaled the tubings inner diameter. Id. at 9.
The Court is skeptical (but does not decide) that Cordiss description of the relationship
between the tubing and the bushing in the accused device in fact runs contrary to a basic law of
physics. Spectralytics seems to think that because the tubing and the bushing in the accused
device are made of separate materials, there must be space between them. This is necessarily
true at some molecular level but at the molecular level, all matter is mostly empty space. See
Harald Fritzsch, Elementary Particles: Building Blocks of Matter 16 (2005) (When we touch the
surface of a diamond, we gain the impression that it is a very dense bit of matter. And so it
actually is but its very hard appearance is due to a combination of electrical forces acting
between the nuclei and the electrons. A diamond ultimately consists of mostly empty
space . . . .). Put another way, at a molecular level, nothing touches; space separates everything.
But this does not prevent things from being solid, or from touching each other, at the level that
matters to mechanical engineers. Accordingly, if the outer surface of the tubing is compressed
against the inner surface of the bushing to such an extent that they are touching each other along
9Consider a ball bearing that falls to the bottom of a barrel filled with oil. One would not
explain the ball bearings ability to slide through the oil by saying there was clearance
between the ball bearing and the oil. To the contrary: One would describe the oil as touching
the ball bearings surface. Cordiss argument is basically that metal tubing passing through a
Teflon bushing is like a metal ball bearing falling through a column of oil. See Miller Dep. at 32
(Teflon is soft. . . . It has a very slippery surface to it, with the lubricious properties . . . .).
-16-
their entire lengths at the scale that matters to mechanical engineers, then the inner diameter of
the bushing could very well equal (as opposed to slightly exceed) the outer diameter of the
tubing.9
In any event, Cordis has admissible evidence that the inner diameter of the bushing is not
greater than the outer diameter of the tubing in the accused device. Spectralytics has admissible
evidence to the contrary. Because the closeness of the fit between tubing and bushing in the
accused device is a disputed issue of fact, the Court denies both sides motions for summary
judgment with respect to literal infringement.
3. Validity
Cordis argues that the 277 patent is obvious under the undisputed facts, and that Cordis
is therefore entitled to summary judgment that the patent is invalid under 103 of the Patent Act.
35 U.S.C. 103. Spectralytics argues that the 277 patent is not obvious under the undisputed
facts, and that Spectralytics is therefore entitled to summary judgment that the patent is not
invalid under 103. Spectralytics also moves for summary judgment that the 277 patent is not
invalid as anticipated under 102 of the Patent Act. (Cordis has not moved for summary
judgment on the question of anticipation.)
Whether the 277 patent is invalid as anticipated or invalid as obvious depends on the
content of the prior art. Thus, in support of their arguments about validity, the parties ask the
10Not all prior art under 102 qualifies as prior art for obviousness purposes under 103.
Specifically, certain prior art under subsections (e), (f), and (g) of 102 is expressly excluded
under 103(c) from the prior art for obviousness purposes, provided that the prior art and the
invention being challenged were once commonly owned. 35 U.S.C. 103(c). Further, it is not
entirely clear whether prior art under subsections (c) and (d) of 102 counts as prior art under
103. See 3 R. Carl Moy, Moys Walker on Patents 9:20 at 9-54 (4th ed. 2007). But these
distinctions are irrelevant in this case: Whatever qualifies as prior art in this case under
subsections (a), (b), (e), or (g) of 102 also qualifies as prior art under 103.
11Under 102(b), an invention is not patentable if the invention was patented or
described in a printed publication in this or a foreign country or in public use or on sale in this
country, more than one year prior to the date of the application for patent in the United
(continued...)
-17-
Court to determine whether particular references are part of the prior art. The Court first
addresses the parties arguments about the content of the prior art, and then turns to their
arguments about anticipation and obviousness.
a. Prior Art
(1) Applicable Principles of Law
Sections 102(a), (b), (e), and (g) of the Patent Act describe various types of prior art that
can render a patent invalid as anticipated under 102 and that are relevant to whether a patent is
obvious under 103. 35 U.S.C. 102, 103; Riverwood Intl Corp. v. R.A. Jones & Co., 324
F.3d 1346, 1354 (Fed. Cir. 2003) (The term prior art as used in section 103 refers at least to
the statutory material named in 35 U.S.C. 102.).10 Although these four subsections of 102
overlap in many respects, what counts as prior art under one subsection does not necessarily
count as prior art under another subsection. Specifically, the temporal and geographic scope of
the universe of prior art varies under the different subsections of 102.
Under 102(b), a reference can count as prior art only if the reference existed before the
critical date of one year before the filing date of the patent application.11 Any issued patent or
11(...continued)
States . . . . 35 U.S.C. 102(b).
12Under 102(a), an invention is not patentable if the invention was known or used by
others in this country, or patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for patent . . . . 35 U.S.C. 102(a)
(emphasis added).
Under 102(e), an invention is not patentable if the invention was described in (1) an
application for patent, published under [35 U.S.C. 122(b)], by another filed in the United States
before the invention by the applicant for patent or (2) a patent granted on an application for
patent by another filed in the United States before the invention by the applicant for patent . . . .
35 U.S.C. 102(e) (emphasis added).
Under 102(g)(2), an invention is not patentable if before such persons [i.e., the
applicants] invention thereof, the invention was made in this country by another inventor who
had not abandoned, suppressed, or concealed it. 35 U.S.C. 102(g)(2) (emphasis added).
-18-
printed publication, from anywhere in the world, that existed before the critical date counts as
prior art under 102(b). Also, any item (or method) that was in public use or on sale in the
United States, whether by the patentee or anyone else, before the critical date counts as prior art
under 102(b). Because the date of a patent application is a matter of public record and
because the critical date can be mechanically derived by counting back one year from the date of
the patent application temporal disputes about prior art under 102(b) are invariably about
whether an ostensible prior-art reference existed before the (undisputed) critical date.
Under 102(a), (e), and (g), however, the temporal scope of the prior-art universe
depends on the date on which the patentee made his invention.12 And that date often cannot be
mechanically derived from the public record. The default rule is mechanical: Under the default
rule, the date on which the patentee made his invention is deemed to be the same as the date on
which the patentee filed his patent application. 1 Donald S. Chisum, Chisum on Patents 3.08
(2008) (A general rule in patent law is that the date of invention of the applicant or patentee for
-19-
purposes of novelty and anticipation is presumed to be the date he files a complete patent
application in the Patent and Trademark Office disclosing the invention.). But a patentee can
attempt to avoid the default rule and establish an earlier invention date in two ways. First, if the
patentee can establish that he in fact reduced his invention to practice as of a particular date, then
that date (and not the patent-application date) will be treated as the invention date. Second, if the
patentee can establish that he conceived his invention as of a particular date, then that date (and
not the patent-application date) will be treated as the invention date, but only if the patentee can
also establish that, after conceiving his invention, he worked diligently to reduce it to practice.
See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (We have held that
priority of invention goes to the first party to reduce an invention to practice unless the other
party can show that it was the first to conceive of the invention and that it exercised reasonable
diligence in later reducing that invention to practice.) (quotation omitted); Loral Fairchild
Corp. v. Matsushita Elec. Indus. Co., 266 F.3d 1358, 1361 (Fed. Cir. 2001) (in infringement suit,
discussing same two ways to prove an invention date).
Because patents are presumed to be valid, challengers bear the burden of proving a
patents invalidity by clear and convincing evidence. 35 U.S.C. 282 (A patent shall be
presumed valid.); Typeright Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir.
2004) (The party seeking to invalidate the patent must do so by clear and convincing
evidence.). This allocation of the burden of proof makes sense when an alleged infringer
attempts to prove invalidity under 102(b) by establishing that a particular reference is prior art
i.e., that it existed before the critical date and that the reference anticipates the claimed
invention. But this allocation of the burden of proof makes less sense when an alleged infringer
This statement is something of an oversimplification, 13 but it suffices for purposes of this
opinion.
-20-
attempts to prove anticipation under 102(a), (e), or (g) and invalidity turns on whether an
ostensible prior-art reference whose date is undisputed predates the patentees invention date.
When a patentees invention date is in dispute, common sense dictates that the patentee
the person who knows when he conceived the invention and what he did to reduce it to
practice should bear the burden of proving an invention date that predates the patentapplication
date. In addition, because the PTO does not generally make any findings about a
patentees invention date in the course of examining a patent application, the mere fact that the
PTO has granted a patent provides no reason for a court or a jury to defer to the patentees
contentions about his invention date. Such contentions should be treated like any other argument
about a disputed issue of fact and evaluated in light of the relevant evidence.
Typically, the PTO does not look at evidence about a patentees invention date. It has no
reason to do so in many cases. But sometimes during the prosecution of a patent, the PTO will
assert that a particular reference invalidates the claimed invention. If that reference is not
102(b) art that is, if it is dated in the year between the critical date and the patent-application
date the patent applicant may antedate the reference (swear behind it, in patent-lawyer
jargon) by filing an affidavit under PTO Rule 131 asserting an earlier invention date.13 37 C.F.R.
1.131; Manual of Patent Examining Procedure (MPEP) 715. Rule 131(b) prescribes what
the applicant must show to establish the earlier invention date:
The showing of facts shall be such, in character and weight, as to
establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date
of the reference coupled with due diligence from prior to said date
-21-
to a subsequent reduction to practice or to the filing of the
application. Original exhibits of drawings or records, or
photocopies thereof, must accompany and form part of the affidavit
or declaration or their absence must be satisfactorily explained.
37 C.F.R. 1.131(b). The PTO examines an applicants affidavit for compliance with this rule,
but the PTO does not otherwise investigate the applicants assertions about his invention date.
See MPEP 715; Loral Fairchild, 266 F.3d at 1366 (Newman, J., concurring) (Inventors
affidavits have always been admissible to antedate a reference. The regulations are explicit that
evidence to antedate a reference may be provided by the inventor . . . .). Given the limited
nature of the PTOs scrutiny of an inventors Rule 131 affidavit, there is little reason for courts to
defer to findings about invention dates made by the PTO during patent prosecution.
Requiring a patentee to bear the burden, when litigating his patents validity, of
establishing an invention date preceding his patent-application date would also be consistent with
the Federal Circuits recent decision in PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299
(Fed. Cir. 2008). In PowerOasis, the accused infringer (T-Mobile) argued that the patents in suit
were anticipated by a reference (the MobileStar Network) that was prior art under 102(b)
because it existed more than one year before June 15, 2000 the date on which the patentee
(PowerOasis) had filed the continuation-in-part (CIP) application that resulted in the patents in
suit. Id. at 1302-03.
But the patents in suit were part of a family of patents and patent applications that grew
out of an application filed in February 1997, well before the MobileStar Network existed. Id.
at 1301. PowerOasis contended that the patents in suit, though resulting from the CIP
application filed in June 2000, should be treated as if they had been applied for in February 1997.
Id. at 1303. (In patent-law jargon, PowerOasis argued that its asserted claims should have the
-22-
benefit of priority going all the way back to the filing date of the first application in the patent
family. Id.) If PowerOasis had prevailed on its argument, the MobileStar Network would not
have been prior art and thus could not have anticipated the patents in suit.
The district court rejected PowerOasiss argument, holding that the priority date that
is, the effective patent-application date of the patents in suit was June 15, 2000 (the date of the
CIP application). Id. On appeal, PowerOasis argued that the district court should have required
T-Mobile (as the party asserting invalidity) to prove that PowerOasis was not entitled to the
February 1997 priority date, instead of placing on PowerOasis the burden of proving that the
patents in suit were entitled to the February 1997 priority date. Id. at 1304. In affirming the
district courts judgment and rejecting PowerOasiss argument, the Federal Circuit said:
[I]n this case, the PTO did not, at any point, make any
determination with regard to the priority date of the various claims
of the asserted patents. . . . The MobileStar Network prior art was
never considered by the examiner. In fact, in this case the PTO did
not make a determination regarding the priority date for the
asserted claims with respect to any reference. . . .
When neither the PTO nor the Board has previously considered
priority, there is simply no reason to presume that claims in a CIP
application are entitled to the effective filing date of an earlier filed
application. Since the PTO did not make a determination
regarding priority, there is no finding for the district court to defer
to.
Id. at 1304-05.
The court noted that T-Mobile (the accused infringer) bore the burden of proving
invalidity by clear and convincing evidence. But the court applied the clear-and-convincingevidence
requirement to what it called T-Mobiles prima facie case:
T-Mobile, the party asserting invalidity, must still show by clear
and convincing evidence that the asserted patent is invalid. Once it
14Cases involving invalidity under 102(b), like PowerOasis, and cases involving
invalidity under 102(a), (e), and (g), like this one, differ at the level of the so-called prima
facie case. Because invalidating prior art under 102(a), (e), and (g) must predate the
patentees invention date, one could argue that making a prima facie case of invalidity under
these sections entails proving that the prior art predates the invention date. By contrast, a prima
facie case under 102(b) can be made without any evidence about the invention date.
To the extent that it makes any sense to talk about a prima facie case of patent
infringement, however, it would make more sense to treat the patentees default invention date
the patent-application date as the invention date for purposes of a prima facie case of
invalidity under 102(a), (e), or (g). That is, once a challenger establishes that a piece of
invalidating prior art predates the patent-application date and otherwise qualifies as prior art
under 102(a), (e), or (g), that should suffice for the patentees prima facie case. The burden
(continued...)
-23-
has established a prima facie case of invalidity and its burden is
met, the party relying on validity is then obligated to come forward
with evidence to the contrary.
Id. at 1305 (quotation marks omitted). The court found that T-Mobile established its prima
facie case of invalidity based on undisputed evidence that the MobileStar Network existed more
than a year before the filing date of the CIP application. Id. With respect to the parties burdens
of proof, the court held:
Once T-Mobile established by clear and convincing evidence that
the MobileStar Network was 102(b) prior art to the asserted
claims of the 658 and 400 patents, the burden was on PowerOasis
to come forward with evidence to the contrary. The district court
therefore correctly placed the burden on PowerOasis to come
forward with evidence to prove entitlement to claim priority to an
earlier filing date.
Id. at 1305-06.
Just as the burden was properly on PowerOasis to establish a priority date earlier than the
default priority date (in that case, the date of the CIP application), so too in this case would it
make sense to place the burden on Spectralytics to establish an invention date earlier than the
default invention date (the date of the 277 patent application).14 The PTO made no findings
14(...continued)
should then shift to the patentee to establish an earlier invention date, just as in PowerOasis the
burden was on the patentee to establish its entitlement to an earlier priority date.
15The Federal Circuit put it this way in Mahurkar:
With all of the evidence from both sides before the jury, Bard [the
accused infringer] must persuade the jury by clear and convincing
evidence that its version of the facts is true. In other words, Bard
must persuade the jury that Dr. Mahurkar did not invent prior to
publication of the catalog. This is because (1) he did not conceive
and reduce his invention to practice before the publication date and
(2) he did not conceive and thereafter proceed with reasonable
diligence as required to his filing date. If Bard fails to meet this
(continued...)
-24-
about when Gustafson invented the apparatus claimed in the 277 patent, just as the PTO made
no findings about the priority date of the patents at issue in PowerOasis.
But Federal Circuit case law about proof of invention dates, and dates of prior art, is not
so simple or logical. When a patentee seeks to avoid a reference offered by a defendant as prior
art under 102(a), (e), or (g) by establishing an invention date earlier than the date of the
reference, the patentee bears only a burden of production, not of persuasion. Mahurkar v. C.R.
Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (Dr. Mahurkar offered evidence at trial to show
that he invented the subject matter of the patent before publication of the Cook reference. He
met his burden of production.); see also Loral Fairchild, 266 F.3d at 1361 (applying
Mahurkar). As long as the patentee produces evidence supporting his claim of an invention date
earlier than the ostensible prior-art reference, the patentee need not persuade the factfinder of that
invention date. Instead, the defendant must establish, by clear and convincing evidence, that the
patentees invention date does not precede the date of the ostensible prior-art reference.
Mahurkar, 79 F.3d at 1578.15
15(...continued)
burden, the catalog is not prior art under section 102(a).
79 F.3d at 1578.
-25-
This would be confusing enough: How can the defendant affirmatively prove a negative
proposition (the invention was not made by a certain date) and do so by clear and convincing
evidence when all of the proof of the affirmative proposition (when the invention was made)
is likely to be in the opposing partys hands? But it gets even more confusing, because the
patentee, when attempting to avoid a defendants ostensible prior-art reference that predates the
patent-application date but arguably postdates the patentees invention date, bears not an ordinary
burden of production, but a heightened one. The patentee must do more than offer some
evidence (such as an affidavit) supporting his pre-patent-application invention date; the patentee
must offer corroboration of that invention date. See Loral Fairchild, 266 F.3d at 1363
([B]ecause the Amelio [i.e., the inventors] affidavit asserts reduction to practice prior to
publication of the Erb reference [i.e., an allegedly invalidating reference], the issue then becomes
whether Loral [the patentee] submitted independent evidence sufficient to corroborate this
assertion.). If the patentee fails to offer corroboration or offers legally insufficient
corroboration as part of its burden of production, then the patentees invention date remains
the default date (the date of the patent application).
To apply this set of rules in determining whether a potentially invalidating reference
offered by a defendant as prior art under 102(a), (e), or (g) is in fact prior art, a court or a
factfinder would have to ask a series of questions. (The Court defers for the moment
consideration of which of these questions are for the judge and which are for the jury.) For
-26-
simplicitys sake, assume that the date of the reference is undisputed and predates the patentapplication
date. The first question would then be: Did the patentee produce some evidence of
an invention date earlier than the date of the reference? The next question might be: Was the
patentees evidence corroborated at all? The third question might be: How well was the
patentees evidence corroborated was it sufficiently corroborated? If the patentees
evidence was sufficiently corroborated, the next question would be: Did the defendant prove
by clear and convincing evidence that the patentees invention date did not precede the date of
the purported prior-art reference? If so, the reference would be prior art. Only then would the
factfinder turn to the substantive question whether the reference invalidated the patent.
The analysis becomes even more rococo when the date or the existence of the purported
prior-art reference is in dispute. To establish that a purported prior-art reference existed on a
certain date, a defendant must provide evidence that corroborates the references existence at the
relevant time. Adenta GmbH v. OrthoArm, Inc., 501 F.3d 1364, 1371 (Fed. Cir. 2007) ([A]
patent cannot be invalidated based on one persons testimony alone without corroborating
evidence, particularly documentary evidence.); Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 412
F.3d 1331, 1337 (Fed. Cir. 2005) ([T]he corroboration rule . . . is available in appropriate cases
to protect patentees from invalidation of their patent based solely upon uncorroborated,
testimonial evidence.) Without such corroboration, the ostensible prior-art reference cannot be
used to invalidate a patent.
Thus, if both the patentees invention date and the date and existence of an ostensibly
invalidating prior-art reference are in dispute, the necessary inquiry goes something like this:
Did the patentee provide sufficiently corroborated evidence of an invention date earlier than his
-27-
patent-application date, and did the defendant provide sufficiently corroborated evidence that the
proffered prior-art reference existed (and met the relevant criteria, such as being public, being in
the right country, etc.) before the (sufficiently corroborated) invention date? If the answer is yes
on both counts, does the reference invalidate the patent?
A further crucial issue is whether (and to what extent) questions about corroboration are
legal questions for the judge or factual questions for the jury. Federal Circuit case law on the
subject is not clear. In TypeRight Keyboard Corp. v. Microsoft Corp., the Federal Circuit seemed
to say that the district court must independently determine whether the existence of a prior-art
reference was corroborated. 374 F.3d 1151, 1159 (Fed. Cir. 2004). But the meaning of
TypeRight is uncertain in light of a more recent case, Adenta GmbH v. OrthoArm, Inc., 501 F.3d
1364 (Fed. Cir. 2007).
In TypeRight, the district court granted summary judgment that a patent was invalid as
obvious in light of a prior-art reference (the Marquardt document) whose status as prior art was
disputed by TypeRight (the patentee). 374 F.3d at 1155. The Federal Circuit reversed, holding
that TypeRight was entitled to a jury determination of whether the Marquardt document was
prior art, because a finding that the document was prior art depended on an assessment of the
credibility of witnesses who testified on behalf of the defendant (Microsoft Corporation) about
the documents publication date. Id. at 1158 ([S]ummary judgment was improper because
genuine issues remain as to the credibility of Microsoft[s] witnesses[] testimony that the
Marquardt document was publicly distributed in 1986.). The Federal Circuit also held,
however, that even if at trial the jury found Microsofts witnesses credible and concluded that the
16The Court sets aside for the moment what a jury must decide when an inventor argues
for an earlier invention date. As noted above, the Federal Circuit requires the inventor to meet
only a burden of production, while the defendant must to prove a negative proposition (that the
invention date does not precede the date of a prior-art reference) by clear and convincing
evidence.
-28-
Marquardt document was indeed prior art, the district court will still have to address whether
the legal requirement of corroboration has been met. Id. at 1159 (emphasis added).
More recently, however, the Federal Circuit held in Adenta that [a]ssessing the
sufficiency of evidence which corroborates a witnesss testimony concerning invalidating
activities has been analyzed under the rule of reason test, and it is a jury question. 501 F.3d at
1372 (emphasis added).
As best this Court can tell, the Federal Circuit means to establish two seemingly separate,
but logically sequential, corroboration requirements. The first requirement is to be considered by
the judge alone, and the second is to be considered by the jury, subject to the normal constraints
on jury factfinding embodied in rules on judgment as a matter of law.
The question for the judge is: Is there any corroborating evidence at all setting aside
the quality and quantity of that evidence on the issue in question (the status of a prior-art
reference; a patentees invention date)? If not, then the jury has no business considering the
issue.
If there is some corroborating evidence on the issue in question, then at least when the
question is the status of a prior-art reference the issue must be submitted to a jury.16 In most
areas of the law, one simply lets the jury decide whether a fact has been proven to the requisite
standard of proof. If patent law were like other areas of the law, this would mean that the jury
would have to decide whether a defendant proved by clear and convincing evidence that an
Indeed, this Court doubts whether a jury could be instructed, 17 in a comprehensible way,
to assess whether a prior-art reference was sufficiently corroborated under a rule of reason. The
model patent jury instructions from the Federal Circuit Bar Association, the American
Intellectual Property Lawyers Association (AIPLA), and the Northern District of California do
not include a model instruction on corroboration. See Fed. Cir. Bar Assn Model Patent Jury
Instrs. (Jan. 2008); AIPLA Model Patent Jury Instrs. (March 2008), available at
http://www.aipla.org (search for patent jury instructions); Model Patent Jury Instrs. for the
N.D. Cal. (Sept. 20, 2004), available at http://www.innsofcourt.org/Content/
InnContent.aspx?Id=893.
18Interference cases featuring the rule of reason include: Medichem, 437 F.3d at 1170-
71; Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998); Holmwood v. Sugavanam, 948
F.2d 1236, 1238-39 (Fed. Cir. 1991); Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985);
Reese v. Hurst, 661 F.2d 1222, 1225 (C.C.P.A. 1981); Berges v. Gottstein, 618 F.2d 771, 774
& n.5 (C.C.P.A. 1980); Mikus v. Wachtel, 542 F.2d 1157, 1159 (C.C.P.A. 1976); Linkow v.
Linkow, 517 F.2d 1370, 1373 (C.C.P.A. 1975); Anderson v. Pieper, 442 F.2d 982, 985 (C.C.P.A.
1971); Berry v. Webb, 412 F.2d 261, 266-67 (C.C.P.A. 1969).
Infringement cases featuring the rule of reason include: Adenta, 501 F.3d at 1372;
Checkpoint Sys., 412 F.3d at 1337; Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d
(continued...)
-29-
ostensible prior-art reference existed at a certain time and met other applicable statutory
requirements (e.g., it was sufficiently public in the relevant geographic area).
The Federal Circuit, however, said in Adenta that assessing the sufficiency of
corroborating evidence is a jury question that has been analyzed under the rule of reason
test . . . . 501 F.3d at 1372. It is difficult to know what the Federal Circuit meant, for two
reasons. First, if the jury must decide whether clear and convincing evidence shows that a
particular reference qualifies as prior art, why separate out the subsidiary issue of whether the
corroborating evidence was sufficient under some rule of reason?17 Second, the rule of
reason test for corroboration was originally a tool for the PTO and reviewing courts not
juries and it has been applied more in patent-interference proceedings (in which the PTO is
the factfinder) than in infringement cases.18
18(...continued)
1344, 1350-51 (Fed. Cir. 2001); Loral Fairchild, 266 F.3d at 1363; Finnigan Corp. v. U.S. Intl
Trade Commn, 180 F.3d 1354, 1369 n.11 (Fed. Cir. 1999); Woodland Trust v. Flowertree
Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998); Ethicon, Inc. v. Yoon, 135 F.3d 1456, 1461
(Fed. Cir. 1998); Mahurkar, 79 F.3d at 1577.
Judge Newman, concurring in Loral Fairchild, criticized the courts importation of the
corroboration requirement from interference cases to an infringement case in which the question
was whether an invention was made before the date of a prior-art reference. 266 F.3d at 1366
(Newman, J., concurring).
19The courts contradictory statements are packed closely together. The relevant passage
reads in full:
[T]his case does not present the question of the necessity of
corroboration there was both testimonial and documentary
corroborating evidence here. Rather, this case questions the
sufficiency of the corroborating evidence. Assessing the
sufficiency of evidence which corroborates a witnesss testimony
concerning invalidating activities has been analyzed under the
rule of reason test, and it is a jury question. A rule of reason
analysis involves an assessment of the totality of the circumstances
including an evaluation of all pertinent evidence. OrthoArm [the
patentee] attempts to discredit each piece of evidence, one by one,
to show that clear and convincing evidence invalidating the patent
was lacking. However, the jury considered all the evidence. We
cannot say that the court erred in concluding that there was
sufficient evidence corroborating Heisers and Schendels
testimony to enable the jury to find that the Time bracket [i.e., the
(continued...)
-30-
Moreover, Adenta seems internally inconsistent. The Federal Circuit described the
question of the sufficiency of corroboration as one for the judge, and then described the question
as one for the jury. Adenta held, [w]e cannot say that the [district] court erred in concluding that
there was sufficient evidence corroborating [the witnesses] testimony to enable the jury to find
that the purported prior-art reference was, in fact, prior art. 501 F.3d at 1372. How can the
sufficiency of corroborating evidence be both a question for the judge and a question for the
jury?19
19(...continued)
invalidating prior art] was publicly used and/or on sale at the 1994
Florida trade show.
501 F.3d at 1371-72 (citations omitted).
-31-
The answer, in this Courts view, is that district judges do not, in fact, need to police jury
findings about what counts as prior art by assessing the sufficiency of corroborating evidence;
nor do district judges need to instruct juries to assess the sufficiency of corroborating evidence.
Rather, provided that some corroborating evidence exists, if a party moves for summary
judgment or judgment as a matter of law on the status of a prior-art reference, the district judge
must determine whether a reasonable jury could find by clear and convincing evidence that the
reference is in fact prior art.
Courts routinely assess whether evidence is sufficient for a reasonable jury to find that a
party has borne its burden of proof. If a court holds, despite the existence of some corroborating
evidence, that a reasonable jury could not find that an ostensible prior-art reference was in fact
prior art, one could describe the courts action as finding the corroboration insufficient but
this description only muddles the analysis. In all cases, if the evidence (including corroborating
evidence) is insufficient for a reasonable jury to find in favor of a party on an issue, a court will
grant summary judgment or judgment as a matter of law against the party on that issue. There is
no reason to put this in terms of whether corroboration is sufficient.
The Federal Circuits corroboration requirement thus has independent significance in only
one situation: when uncorroborated witness testimony on an issue (the status of a prior-art
reference; an invention date) would be sufficient, in the absence of the corroboration
requirement, for a reasonable jury to find that the testimony proves the issue to the requisite
-32-
standard of proof. In such a situation, if a judge finds that there is no evidence that independently
corroborates the testimony, then the judge must find as a matter of law that the issue is not
established, even though a reasonable jury could find the issue established by the requisite
standard of proof.
To summarize, then, with reference to this case: If there is no evidence to corroborate the
testimony of Spectralyticss witnesses that, before the 277 patent-application date, Gustafson
either (1) reduced the claimed invention to practice or (2) conceived of it and worked diligently
to reduce it to practice, then the Court must find as a matter of law that Spectralytics has not met
its burden of production with respect to establishing an invention date that predates the
application date. But if there is such corroborating evidence, then Gustafsons invention date is a
question of fact for the jury, unless no reasonable jury could find, by clear and convincing
evidence, that his invention date came after the date of the particular disputed reference.
With respect to prior-art references offered by Cordis, if there is no evidence to
corroborate the testimony of Cordiss witnesses about the existence or status of the ostensible
prior art, then the Court must find as a matter of law that Cordis has not met its burden of
production with respect to that prior art. But if there is corroborating evidence, then the
existence or status of the ostensible prior art is a question of fact for the jury again, unless no
reasonable jury could find that Gustafsons invention date came after the date of the particular
disputed reference.
The Court applies these principles below. Before doing so, however, the Court takes this
occasion to respectfully urge the Federal Circuit to revisit the extraordinarily complex set of rules
that this Court has spent the past fifteen-plus pages trying (perhaps unsuccessfully) to decipher.
20The three disputed patents are: (1) U.S. Patent No. 5,744,778 to Kash, applied for on
April 2, 1996, Rigby Decl. Ex. 9; U.S. Patent No. 5,765,455 to Muhlnickel, applied for on
May 1, 1996, Merrill Decl. Ex. 12; and Japanese patent No. 8-197595 to Sato, issued July 23,
1996, Rigby Decl. Ex. 8. The Court, like the parties, refers to them as Kash, Muhlnickel,
and Sato, respectively. The effective dates of Kash and Muhlnickel are the patent-application
dates. The effective date of Sato, because it is a foreign patent, is the date it issued.
Spectralytics moved for summary judgment that Kash and Sato are not prior art; Cordis
moved for summary judgment that Kash and Muhlnickel are prior art. As noted in the text,
however, Cordis has since conceded that genuine issues of fact exist that preclude summary
judgment in its favor. Therefore, only Kash and Sato (and not Muhlnickel) are still at issue. As
a practical matter, though, a decision about Kash may implicitly resolve the dispute over
Muhlnickel, as Muhlnickels effective date is later than Kashs.
-33-
Rules assigning burdens of production and proof and dividing responsibilities between judges
and jurors have to be understood and applied by the ordinary mortals who sit on district-court
benches and in jury boxes. Moreover, at some point distinctions become so fine that they
become lost on typical jurors (or even typical judges) and thus have little practical impact.
Simplification and clarification of these rules would be most welcome.
(2) Published Patents that Predate the 277 Application Date
The parties dispute whether the prior art includes two United States patents (to Kash and
Muhlnickel) and one Japanese patent (to Sato).20 The patents do not qualify as prior art under
102(b) because their effective dates fall in the year preceding Gustafsons application for the
277 patent that is, after 102(b)s critical date. To qualify as prior art under 102(a), (e), or
(g), these patents must have predated Gustafsons invention date. Of these three patents, the one
with the earliest effective date is Kash, which was applied for on April 2, 1996. The basic issue,
then, is whether Gustafsons invention date precedes April 2, 1996.
The first question for the Court is whether Spectralytics has met its burden of production
with respect to Gustafsons invention date. Specifically, has Spectralytics produced some
-34-
corroborated evidence that, before April 2, 1996, Gustafson either (1) actually reduced his
invention to practice, or (2) conceived his invention and worked diligently until his application
date to reduce it to practice? Although it is a close question, the Court finds that Spectralytics
has met its burden of production. There is corroborating evidence, in the form of a drawing, that
Gustafson conceived of the invention no later than January 16, 1996. Rigby Decl. Ex. 45. But
the evidence of his actual reduction of the invention to practice, or his diligence in attempting to
reduce it to practice, is more equivocal.
Cordis, in its summary-judgment reply brief, has abandoned its argument for summary
judgment with respect to Gustafsons invention date. Cordis Reply Mem. at 14 [Docket
No. 139]. Instead, Cordis concedes that evidence presented by Spectralytics creates a fact
question as to Gustafsons invention date. Id.
Spectralytics, however, continues to press its argument for summary judgment that Kash
and Sato are not prior art. Given that Spectralytics has met its burden of production with respect
to an invention date earlier than April 2, 1996, the question for the Court is this: Could a
reasonable jury find, by clear and convincing evidence, that Gustafsons invention date did not
come before April 2, 1996? Only if a reasonable jury could not possibly find, by clear and
convincing evidence, that Gustafsons invention date came after April 2, 1996 would
Spectralytics be entitled to summary judgment that Kash and Sato are not prior art.
The Court finds that Spectralytics is not entitled to summary judgment. The evidence
with respect to Gustafsons invention date is exceedingly unclear, making it impossible for the
Court to hold that a reasonable jury must find that Gustafsons invention date precedes April 2,
1996.
The page numbering in Spectralyticss memorandum opposing 21 Nobles summaryjudgment
motion runs from 1 through 18 and then (on actual page 19) starts over at 1 again. The
Courts citation in the text to page 38/20 is a citation to actual page 38, which bears the
number 20.
22Spectralytics characterizes Allen as an independent witness. Spectralytics Opp. Noble
SJ Mot. at 40/22. This characterization is debatable given that Allen was a Spectralytics
employee in early 1996, when he claimed to have seen the invention working. He now works
elsewhere. See Allen Decl. 2.
-35-
Spectralytics cites testimony of two of its employees (but not Gustafson) that the
invention was working before the end of January 1996. Spectralytics Mem. Opp. Noble Mot.
S.J. (Spectralytics Opp. Noble SJ Mot.) at 38/20 [Docket No. 124].21 Spectralytics also cites
testimony of a third employee, Bruce Allen, that he saw the invention working in late March
1996. Id.; Allen Decl. 3-4 [Docket No. 126].22 Spectralytics also argues that by March 1996,
Gustafson was working diligently to reduce the invention to practice. Spectralytics Opp. Noble
SJ Mot. at 34/16 to 35/17.
To the extent that Spectralytics argues that Gustafson actually reduced his invention to
practice, there is a fact question as to whether the invention ever worked for its intended purpose.
That purpose is not, as Spectralytics puts it, to have the workpiece fixture (and bushing) carried
on the laser head so that they were maintained in a fixed spatial relationship and movement of
one would also move the other. Id. at 36/18; id. at 40/22 (characterizing the inventions
intended purpose as keeping the workpiece fixture (and bushing) and laser head in a fixed
spatial relationship so that movement of one would also move the other). If that was the
inventions purpose, the device would have been reduced to practice even if it never cut a single
stent.
-36-
The 277 patent itself, however, tells us that the invention is useful in manufacturing
small, thin-walled, tubular devices known as stents . . . . 277 Pat. col. 1:7-8 (emphasis added).
Further, the patent tells us that [t]his invention relates to a method of and apparatus for cutting a
pattern along the length of a thin walled, hollow workpiece, such as a stent, which is much more
reliable and has much less scrap than known methods. Id. col. 1:66-67 to col. 2:1-2. An
inventions purpose is the thing for which it is useful; it is not the means by which it
accomplishes that useful thing.
Directly attaching the workpiece fixture to the cutting tool and maintaining them in a
fixed spatial relationship is therefore not the purpose of Gustafsons invention. Rather, it is a
means by which the invention achieves its purpose of cutting metal tubing more reliably, and
with less scrap, than existing methods and devices. And because Spectralytics focuses in its
briefs on establishing that the invention worked for the wrong intended purpose, Spectralytics
has not established that Gustafsons invention worked for its true intended purpose before he
filed his patent application.
To the extent that Spectralytics argues for an invention date based on conception and
diligence in reducing the invention to practice (as opposed to actual reduction to practice), there
is a fact question as to Gustafsons diligence. It is unclear from the record what Gustafson did to
reduce his invention to practice after conceiving of the invention in January 2006.
Given the state of the record, the Court cannot decide on summary judgment whether
Kash, Sato, and Muhlnickel are prior art to the 277 patent. To establish that these patents are
prior art, Cordis will have to convince the jury to find, by clear and convincing evidence, that the
-37-
patents predate Gustafsons invention date. Because the status of these patents as prior art is in
dispute, the Court will not consider them in connection with Cordiss invalidity arguments.
(3) The Accused Device
Spectralytics moves for summary judgment that the accused device is not prior art under
102 because it was not public. Noble concedes the point. Noble Mem. Opp. Spectralytics Mot.
S.J. (Noble SJ Opp.) at 3 [Docket No. 117] ([D]efendants agree that the Follower Assembly
[i.e., the accused device] is not prior art under Section 102 because Noble maintained it as a trade
secret.). The Court therefore grants summary judgment to Spectralytics on this issue.
Noble further contends, however, that the accused device, although not prior art, is
nevertheless relevant to the validity of the 277 patent. Id. at 36. Specifically, Noble argues that
its development of the accused device is relevant to the level of ordinary skill in the art, relevant
to the motivation to combine, and [relevant] as a secondary consideration of obviousness. Id.
at 37.
Spectralytics apparently does not dispute the legal proposition that the accused device,
even if not prior art under 102, may nevertheless be relevant to obviousness under 103.
Instead, Spectralytics contends that there is insufficient corroborative evidence to prove that the
accused device existed before Gustafson made his invention. Spectralytics Reply Mem. at 6-7
[Docket No. 142].
The Court will not consider the accused device in connection with obviousness, for two
reasons. First, as the Court explains below, the Court finds that there is a dispute of fact over
whether Noble stole trade secrets from Spectralytics. If Noble stole trade secrets related to the
-38-
277 patent and used those secrets to develop the accused device, then Nobles development of
the accused device is extremely weak evidence that the 277 patent was obvious.
Second, the evidence is unclear as to exactly when the accused device was developed.
Nobles witnesses consistently testified that the accused device existed by late 1995, and their
testimony is corroborated by evidence that in December 1995 Noble shipped stents cut with a
complex geometry to a customer (SciMed). See Koehler Decl. Ex. J (C. Noble Dep.) at 43-49
[Docket No. 118]; id. at NNI_00018-37 (C. Noble. Dep. Ex. 17); Koehler Decl. Ex. K (Miller
Dep.) at 27-29; Koehler Decl. Ex. N (Przeracki Dep.) at 18-19. But the testimony of one
witness, George Mackaronis, casts doubt on when the accused device existed. Mackaronis,
Cordiss Rule 30(b)(6) witness, testified that Cordis first approved a Noble stent-cutting machine
in late 1996 or 1997. Rigby Decl. Ex. 123 (Mackaronis Dep.) at 48. He also said that in the
Noble machine, as originally designed, the workpiece fixture was attached to a frame and not
directly to the laser cutting head. Id. at 54-56. Later in the deposition, Mackaronis said that he
had been describing a ComTal-made machine, not a Noble machine. Id. at 57-72. The Court
cannot make sense of Mackaroniss testimony, but his confusion is sufficient to create a dispute
of fact about when the accused device existed.
(4) The 1994 LPL/RMS Machine
In 1993, a company known as RMS was cutting stents for Cordis using an older
technique called electrical discharge machining or EDM. Rigby Decl. Ex. 70 (Dunbar Dep.)
at 9. Sometime in 1993 or 1994, Cordis and RMS began discussions about cutting stents with
lasers. Dunbar Dep. at 13-14. RMS contracted with a company called LPL to supply lasercutting
machines that RMS would use to cut stents for Cordis. Id. at 14; Mackaronis Dep. at 33.
23If this were a normal case, on the record before the Court, the existence of a tailstockless
1994 LPL/RMS machine would be a question for the jury.
-39-
Spectralytics moves for summary judgment that the prior art does not include a lasercutting
apparatus made sometime in 1994 by LPL for RMS. The Court grants the motion, for
two reasons.
First, the Court agrees that Cordis has not provided any corroborating evidence of the
existence of a 1994 LPL/RMS machine without a tailstock. Cordiss witnesses testified that the
machine did not include a tailstock. Dunbar Dep. at 36, 93-95. But the only documentary
evidence corroborating the machines existence shows a tailstock. Rigby Decl. Ex. 71 (Dunbar
Dep. Ex. 7). Thus there is no corroborating evidence that in 1994, RMS used or LPL made a
machine without a tailstock.23
The existence of a 1994 LPL/RMS machine with a tailstock is, as noted, corroborated by
documentary evidence. Dunbar Dep. Ex. 7. But no reasonable jury could find that the tailstockbearing
machine was sufficiently public to qualify as prior art under 102. The machine was
made by LPL for RMS, which was under contract with Cordis. There is no evidence that any of
these entities intended to (or did) share the machine outside of their group.
Noble contends that because the security at RMS surrounding the machine was not
airtight, the machine was in public use. Noble SJ Opp. at 21-22. The evidence cited by Noble
shows, at most, that tradespersons and other non-Cordis personnel may have seen the machine
when working in or walking through Cordiss factory. Id. But this is mere speculation. The
24Noble also asserts that by 1996 LPL, RMS and Comtal were selling Swiss-style
machines to competitors of JJIS. Noble SJ Opp. at 22. Sales made in 1996 are obviously not
relevant to whether the LPL/RMS machine was kept secret in 1994.
Similarly irrelevant is Nobles assertion that RMS commercialized its stent cutting
machine and used it to make stents for the benefit of the public by 1994 . . . . Id. at 24. Publicly
selling the output of a secret machine does not make the machine itself public.
-40-
Court finds that RMSs private use of the machine did not become public by virtue of some
slight possibility that an outsider saw the machine in passing.24
Accordingly, the Court finds that the prior art does not include a tailstock-less machine
made by LPL for RMS in 1994. Further, because the existence of such a machine is
uncorroborated, the Court holds that the existence of a tailstock-less 1994 LPL/RMS machine
cannot be considered among the secondary considerations related to obviousness. But evidence
that LPL/RMS designed a machine with a tailstock in 1994 a fact corroborated by
documentary evidence is both undisputed and relevant to secondary considerations of
obviousness.
b. Anticipation
Spectralytics moves for summary judgment that claim 1 of the 277 patent is not
anticipated. Spectralytics SJ Mem. at 30-31. Specifically, Spectralytics argues that neither the
accused device nor the 1994 LPL/RMS device anticipates the claim. The Court agrees with
Spectralytics.
As explained above, the accused device is not prior art because Noble by its own
admission kept it secret. Noble SJ Opp. at 3. It therefore cannot anticipate claim 1.
It is unclear whether Noble and Cordis deny Spectralyticss contention that the 1994
LPL/RMS device does not anticipate claim 1. To support its argument against anticipation,
-41-
Spectralytics asserts not only that, for reasons discussed above, the 1994 LPL/RMS device is not
prior art, but also that the device, even if it is prior art, does not anticipate because it does not
meet every limitation of claim 1 of the 277 patent. Spectralytics SJ Mem. at 30-31.
Cordis, in its brief opposing Spectralyticss summary-judgment motion, asserts that both
obviousness and anticipation should be decided by a jury. Cordis SJ Opp. at 42. But neither
Noble nor Cordis explains how the 1994 LPL/RMS device anticipates claim 1 of the 277 patent.
Instead, they argue that the 1994 LPL/RMS device is prior art (or, at least, that the devices status
as prior art must be decided by a jury). Noble SJ Opp. at 11 (Spectralytics contention that the
1994 LPL/RMS machine does not qualify as prior art because it is uncorroborated and an
undisclosed trade secret is similarly faulty.); Cordis SJ Opp. at 42 (The jury will likewise have
to resolve whether the laser cutting machines designed by LPL and RMS constitute prior art.).
Because a finding that the 1994 LPL/RMS device is prior art would be necessary to, but not
sufficient for, a finding that the device anticipates claim 1 of the 277 patent, Cordis and Noble
have opposed only one aspect of Spectralyticss anticipation argument.
The Court has already found that there is no evidence to corroborate the existence of a
tailstock-less 1994 LPL/RMS machine. The Court agrees with Spectralytics (and Cordis and
Noble do not appear to deny) that an LPL/RMS machine with a tailstock does not anticipate
claim 1 of the 277 patent. In particular, claim 1 requires a cantilever support being located on
just one side of the laser beam with . . . the tubing being unsupported on the other side of the
laser beam. 277 Pat. col. 6:10-16. The LPL/RMS machine with a tailstock, as depicted in
Exhibit 7 to the Dunbar deposition, does not meet this limitation and therefore does not
anticipate claim 1 of the 277 patent. The 1994 LPL/RMS machine also does not anticipate
-42-
claim 1 of the 277 patent because, as noted above, it was not sufficiently public to be prior art
under 102.
c. Obviousness
Cordis contends that the undisputed evidence establishes that the 277 patent is obvious
and therefore invalid under 35 U.S.C. 103. Cordis SJ Mem. at 1-23. Spectralytics contends
that the undisputed evidence establishes that the 277 patent is not obvious. Spectralytics SJ
Mem. at 31-37. Both Cordis and Spectralytics move for summary judgment on the issue of
obviousness. Although Cordiss motion is far stronger than Spectralyticss, the Court ultimately
agrees with neither party and finds that the patents obviousness must be determined at trial.
In the Federal Circuits familiar formulation, whether a claimed invention is obvious is a
legal conclusion that depends on underlying factual findings. See, e.g., Alza Corp. v. Mylan
Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006). The Supreme Court, in Graham v. John Deere
Co. of Kansas City, set out the factual issues that underlie the question of obviousness:
Under 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background the obviousness or
nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.
383 U.S. 1, 17-18 (1966). In the recent landmark case of KSR International Co. v. Teleflex, Inc.,
the Court quoted this passage from Graham and affirmed that [w]hile the sequence of these
questions might be reordered in any particular case, the factors continue to define the inquiry that
controls. 127 S. Ct. 1727, 1734 (2007).
-43-
The Court discusses below the parties evidence with respect to the relevant factual
issues. The Court then turns to the legal question of the obviousness of the 277 patent.
(1) Factual Issues
(a) Level of ordinary skill in the art
As discussed above in connection with claim construction, Spectralytics and Cordis have
each agreed, for purposes of their summary-judgment motions on obviousness, to adopt the
others proposed definition of the person of ordinary skill in the art. Roughly speaking, the
person of ordinary skill is a mechanical engineer by education or by trade who has experience in
working with the general type of tooling involved in this case. The parties seem to agree that
most of the witnesses on both sides count as persons of ordinary skill in the art. Accordingly, the
Court has considered all of the testimony proffered by the parties on the question of obviousness,
save the testimony of Larry Nixon.
(b) Scope and content of the prior art
As discussed above, the Court cannot decide on summary judgment whether the Kash,
Muhlnickel, and Sato references are prior art. The Court has determined, however, that the
accused device and the 1994 LPL/RMS device (with or without a tailstock) are not part of the
prior art.
The prior art therefore includes laser-cutting machines including such machines that
were before the PTO during prosecution of the 277 patent and Swiss-style cutting machines.
The specific examples of Swiss-style cutting machines considered by the Court as part of the
prior art include: (1) the Gorton pamphlet from 1945, Rigby Decl. Ex. 50 at 5; and (2) United
-44-
States Patent No. 4,258,598 to Hoffman, issued in 1981 and applied for in 1979. Merrill Decl.
Ex. 13.
The laser-cutting machines in the prior art include United States Patent No. 5,026,965 to
Ohe. Merrill Decl. Ex. 39. As noted above in connection with claim construction, the patent
examiner relied on Ohe to reject an earlier version of claim 1 of the 277 patent as anticipated.
PTO Office Action (Mar. 4, 1998) at 4. The examiner also relied on Ohe in combination with
United States Patent No. 2,339,986, issued in 1943 to Engert, to find other asserted claims
invalid as obvious. Id.
(c) Differences between prior art and the patented invention
The Swiss-style cutting machines, as exemplified in the Gorton reference, differ from the
patented invention primarily in two respects: (1) the nature of the cutting tool, and (2) the nature
of the attachment between the cutting tool and the workpiece support. Swiss-style machines use
metal cutting tools rather than lasers. And in Swiss-style machines, the workpiece fixture is
attached only indirectly to the cutting tool though the indirect attachment is rigid, since both
the cutting tool and the workpiece fixture are rigidly attached to a frame.
The laser-cutting machine shown in Ohe differs from the patented invention primarily in
the nature of the workpiece support. See Merrill Decl. Ex. 39. The support in Ohe is basically an
upside-down U-shaped bracket with open circles oriented face-to-face at either end of the U. The
laser-cutting head in Ohe is attached to the middle of the U, and the tube being cut passes
through the two circles; the laser cuts holes in the portion of the tube between the circles and
under the middle of the U.
-45-
Unlike the workpiece fixture in Ohe, which supports the tubing being cut on both sides,
the device claimed in the 277 patent supports the tubing being cut on only one side. Such onesided
or cantilevered support is precisely the type of support used in Swiss-style machines such
as the machine shown in the Gorton pamphlet and in United States Patent No. 4,258,598 to
Hoffman.
(d) Teaching Away
Spectralytics contends that the Swiss-style prior art teaches away from the patented
invention. Spectralytics SJ Mem. at 34. In particular, Spectralytics stresses that in Swiss-style
machines, the workpiece fixture and the cutting tool are not directly connected, as in the patented
invention, but rather are separately attached to the same frame or mounted to the same platform.
Id. at 33-34.
Spectralytics has identified no item of Swiss-style prior art that expressly teaches away
from directly connecting a workpiece fixture to a cutting tool, and the Court would be tempted to
dismiss Spectralyticss teaching-away argument as implausible save for one thing: The argument
is supported by the testimony of Paul Huber, one of Cordiss expert witnesses on Swiss-style
machines. Id. at 34. Huber testified that, in his opinion, the device claimed in the 277 patent
would be less effective in minimizing vibration-related problems than a Swiss-style device.
Rigby Decl. Ex. 120 at 147-48. Huber also agreed that the attachment depicted in the 277 patent
between the workpiece fixture and the cutting tool seemed less rigid than the attachment in a
normal Swiss-style machine. Id. at 150. And when asked whether, in that respect (i.e., with
respect to the rigidness of the attachment between the workpiece fixture and the cutting tool), the
-46-
277 patent was contrary to the accepted teachings of Swiss automatic screw machines, Huber
agreed that it was. Id.
(e) Secondary considerations
Secondary considerations relevant to obviousness include the commercial success of the
patented invention; whether it met long-felt but unsolved needs and, relatedly, whether others
tried but failed to solve the problem; whether the patented invention gave unexpected results; and
whether the patented invention received industry acclaim. See Eli Lilly & Co. v. Zenith Goldline
Pharms., Inc., 471 F.3d 1369, 1380 (Fed. Cir. 2006); see also Graham, 383 U.S. at 17.
With respect to commercial success, Spectralytics argues that Nobles successful use of
the accused device establishes the commercial success of the patented invention. Spectralytics
SJ Mem. at 37. But the Court has held that whether Nobles device infringes the 277 patent is a
disputed question of fact. Moreover, there is a question of fact as to whether Nobles success
resulted from use of the accused device or from other factors, such as bringing all stent-related
procedures in-house. See Mackaronis Dep. at 42 ([O]ne of . . . the most favorable things about
Norman Noble was that they were providing a complete process. They were going to process the
complete stent.).
With respect to other secondary considerations, the Court finds that the record is unclear.
There is evidence that Cordis spent a substantial amount of money and effort working with RMS
and with Noble to develop a better stent-cutting machine. Those efforts, however, seem to have
taken place over the course of a few years (in the vicinity of 1993 to 1996). It is hard to say, in
the abstract, whether this is a long period of time for developing a laser-based stent-cutting
machine.
-47-
(2) Legal Conclusion on Obviousness
Although this is a close question, the Court finds that sufficient disputes of fact exist with
respect to the underlying factual issues that the Court cannot decide, on summary judgment,
whether the 277 patent is an obvious combination of Swiss-style cutting machines and prior-art
laser-cutting machines.
On the one hand, the differences between Swiss-style machines and the patented
invention are relatively minor. Substituting one type of cutting tool (a laser) for another (a metal
blade) is the type of substitution that even a layperson would find obvious.
Further, in both the Swiss-style machines and the patented invention, the workpiece
fixture and the cutting tool are, in the words of the patent, in a fixed spatial relationship. The
main difference between Swiss-style machines and the patented invention is how that fixed
relationship is achieved. In Swiss-style machines, it is achieved by rigidly connecting the cutting
tool and the workpiece fixture to the same frame. In the patented invention, a fixed relationship
is achieved by rigidly attaching the workpiece fixture directly to the cutting tool.
Whether this modification would have been obvious to one of skill in the art is a close
question. Spectralyticss best evidence that it would not have been obvious is the testimony of
Huber, Cordiss Swiss-machine expert. Spectralytics contends that Hubers testimony shows that
the Swiss art teaches away from attaching a workpiece fixture directly to a cutting tool as in the
277 patent. Spectralytics SJ Mem. at 34. Cordis points out in response that Hubers testimony
is not prior art. Cordis Reply Mem. at 8. Cordis also points to other testimony by Huber to the
effect that he thought that combining Swiss-style machines and lasers was obvious. Id. But
Hubers testimony is, at best, ambiguous as to whether familiarity with Swiss-style art would
-48-
have led a person of ordinary skill in the art to design a device like that claimed in the 277
patent.
Cordis has strong evidence that it would have been obvious to modify a Swiss-style
machine by using a laser cutting tool and attaching the workpiece fixture directly to the cutting
tool as in the 277 patent. The engineers at RMS, in the course of developing a laser-based stentcutting
machine, expressly considered modifying their existing machine to make it resemble a
Swiss-style machine. Rigby Dep Ex. 72 at CSP 0036368. This strongly suggests that someone
trying to solve the problem of cutting intricate stents with lasers would have looked to Swissstyle
machines for ideas.
This conflict in the evidence makes it difficult to determine, on motion for summary
judgment, whether the approach of the 277 patent attaching a workpiece fixture directly to a
laser-cutting head and supporting the tubing being cut in a cantilever fashion would have
been obvious to a person of skill in the art. The question of obviousness is also made more
difficult because there is a dispute of fact over whether Sato and Kash are part of the prior art.
Sato, in particular, looks very much like the device claimed in the 277 patent (and indeed, the
examiner initially rejected Gustafsons claims over Sato). If Sato is part of the prior art, then the
case for obviousness becomes very strong indeed.
On the state of the record, however and especially in light of the Huber testimony
the Court cannot say that, based on the undisputed facts, Cordis has established that the 277
patent is obvious. And the Court most certainly cannot say that Spectralytics has established that
the 277 patent is not obvious. Both motions for summary judgment on the issue of obviousness
are denied.
-49-
C. Trade-Secrets Theft and Unfair Competition
Spectralytics brings claims against Noble for theft of trade secrets and unfair competition.
It is clear from the complaint that the two claims are based on the same alleged facts. First Am.
Compl. 34 (NNI [i.e., Noble] has unfairly competed with SPECTRAlytics by obtaining trade
secret and other confidential information from NNI [sic; should be Spectralytics] and using that
information for NNIs commercial benefit and exploitation.). Noble asserts that because the
unfair-competition claim derives from the trade-secrets claim, the two claims stand or fall
together. Noble SJ Mem. at 18 n.20 [Docket No. 90]. Spectralytics agrees, at least for purposes
of Nobles summary-judgment motion. Spectralytics Opp. Noble SJ Mot. at 19/1 n.15.
Accordingly, the Court focuses on the trade-secrets claim.
Noble moves for summary judgment on Spectralyticss trade-secrets claim on two
grounds. First, Noble contends that the claim is barred by the statute of limitations. Noble SJ
Mem. at 18-26. Second, Noble contends that there is no evidence that it had access to the trade
secrets that it is accused of stealing, and thus no reasonable jury could find Noble liable. Id. at
26-30. The Court addresses each argument in turn.
1. Statute of Limitations
The Court assumes for purposes of Nobles motion that Ohios four-year statute of
limitations governs. Ohio Rev. Code. Ann. 1333.66 (An action for misappropriation shall be
commenced within four years after the misappropriation is discovered or by the exercise of
reasonable diligence should have been discovered.). If the four-year Ohio statute of limitations
has run as Noble contends then so has the shorter, three-year limitations period under
Minnesota law. Minn. Stat. 325C.06. The statute of limitations in each state embodies, in
Noble also seems to argue that because the allegedly 25 stolen trade secrets became public
when the 277 patent was published in 1998, the statute of limitations must have run because any
theft ended in 1998. Noble SJ Mem. at 20-21. This argument, if indeed Noble is making it (the
Court cannot be sure), hardly merits comment. If Noble stole trade secrets in 1996, the fact that
those secrets became public in 1998 does not mean that Noble is immune from liability for its
theft in 1996 and, as noted, the statute of limitations on claims arising out of that 1996 theft
began to run when Spectralytics discovered or should have discovered it. The fact that the trade
secrets became public in 1998 is irrelevant to that inquiry.
-50-
identical language, the discovery rule. Under that rule, the limitations period begins to run when
a wrong is actually discovered or when the wrong by the exercise of reasonable diligence should
have been discovered. Ohio Rev. Code. Ann. 1333.66; Minn. Stat. 325C.06.
The original complaint in this action was filed in July 2005, but Spectralytics did not
bring a claim for trade-secrets theft against Noble until it filed an amended complaint on
August 3, 2006. Accordingly, if Spectralytics knew or should have known of the alleged theft of
trade secrets before August 3, 2002, its trade-secrets claim is untimely.
Noble contends that Spectralytics was put on notice of its claim against Noble by a
segment of the News Hour with Jim Lehrer that aired on PBS in March 2001.25 Noble SJ
Mem. at 21-22. In the context of discussing Vice President Dick Cheneys heart problems, the
segment included information about stent technology in general, interviews with employees of
Johnson & Johnson and Cordis, and images of a stent being cut with a machine that resembled
the device claimed in the 277 patent.
Spectralyticss cofounder Gary Oberg saw this broadcast and had a suspicion that
Noble (which was then making stents for Cordis) might be infringing the 277 patent. Rigby
Decl. Ex. 44 (Oberg Dep.) at 170. It is less clear whether Oberg also suspected that Noble had
stolen Spectralyticss trade secrets. Because the broadcast aired in 2001, and because the 277
-51-
patent had issued roughly two and one-half years earlier, even if the machine shown in the
broadcast infringed the 277 patent, that machine could have been developed from the patent
alone rather than from stolen trade secrets. And when asked what his suspicion was after seeing
the 2001 broadcast, Oberg said, That they [Noble] were using this patent to their advantage.
Oberg Dep. at 186. Oberg did, however, also say that his suspicion of Noble was based in part
on the [p]roximity of [the Nobles] visits to Spectralytics to when they were actually making
stents and on the fact that Jack Lundeen, a sales representative for Noble, had access to the
Spectralytics facility. Id. at 187.
Suspicion is not the same as knowledge, though. See Sokol Crystal Prods., Inc. v. DSC
Commcns Corp., 15 F.3d 1427, 1430 (7th Cir. 1994) (holding, under Wisconsin trade-secrets
act, that concerns and suspicions rather than knowledge of trade-secrets misuse do not start
the clock of the statute of limitations). Noble nonetheless argues that Obergs suspicions are
equivalent to knowledge of trade-secrets theft because Spectralytics filed suit for patent
infringement based on those suspicions. Noble SJ Mem. at 22.
This argument is too clever by half. For one thing, it is based on Nobles assertion that if
the March 2001 broadcast supported patent-infringement allegations, it was also sufficient to
support allegations of trade secret misappropriation. Id. at 22. As already explained, this
assertion is incorrect in light of the patents issuance in 1998; in theory, Spectralytics could have
had strong reason to believe that the machine infringed its patent without having had any reason
to believe that its trade secrets had been stolen. Further, Nobles argument rests on the dubious
proposition that the knowledge that permits a party to bring a trade-secrets claim without being
sanctioned under Rule 11 of the Federal Rules of Civil Procedure is the same as the knowledge
-52-
that triggers the running of the statute of limitations on that claim. Noble cites no authority
supporting this proposition, and it would be surprising if this proposition were true, given that
many claims that pass muster under Rule 11 are dismissed after discovery reveals them to be
factually unsupported.
Noble also contends that even if the March 2001 broadcast did not give Spectralytics
actual knowledge of the theft of its trade secrets, it nonetheless put Spectralytics on notice of the
possible theft of its trade secrets. At that point, according to Noble, Spectralytics had the duty to
investigate the possible theft. Id. at 23-25. Had it done so, and had it exercised reasonable
diligence, it would have quickly discovered the alleged theft of its trade secrets. Thus, Noble
argues, the statute of limitations began to run in March 2001.
The problem with Nobles argument is that there is no evidence of what Spectralytics
would have learned if it had exercised reasonable diligence in investigating its possible tradesecrets
claim in March 2001. Noble has certainly not demonstrated that Spectralytics would have
acquired knowledge of Nobles alleged theft of trade secrets. Indeed, the evidence what little
there is of it is to the contrary. It is undisputed that the stent-cutting machine shown in the
March 2001 video was not a Noble machine at all, but rather a Cordis machine in use at a Cordis
facility (or the facility of a Cordis affiliate). Noble SJ Mem. at 25; Spectralytics Opp. Noble SJ
Mot. at 24/6. Further, Spectralytics filed trade-secrets claims against Noble only after
Spectralytics filed suit for patent infringement and received, during discovery with respect to the
patent-infringement claims, materials that Spectralytics considered to be evidence of tradesecrets
theft by Noble. Spectralytics Opp. Noble Mot. SJ at 26/8. There is no reason to believe
-53-
that Spectralytics could have gained access to those same materials in the course of a private
investigation started in March 2001.
Without evidence that Spectralytics would have discovered facts on which to base its
trade-secrets claim if Spectralytics had followed up on the suspicions aroused in Oberg by the
March 2001 PBS broadcast, the Court cannot find that the statute of limitations on
Spectralyticss trade-secrets claims began to run in March 2001. Nobles motion for summary
judgment with respect to the statute of limitations is therefore denied.
2. Access
Noble contends that it is entitled to summary judgment on Spectralytics trade-secrets
claim for a second reason: because no reasonable jury could find that Noble had access to the
trade secrets that it is alleged to have stolen. Noble SJ Mem. at 26-30. The evidence supporting
Spectralyticss trade-secrets claim is indeed extremely weak, but the Court concludes that
Spectralytics has barely enough evidence to escape summary judgment.
Spectralytics argues that Noble had access to its trade secrets in one of two ways:
through observations made by Larry, Chris, and Scott Noble (the principals of Noble) during
visits to Spectralyticss facilities in 1996, or through observations made by a Noble sales
representative, Jack Lundeen, who for a time was also a sales representative for Spectralytics.
Spectralytics Opp. Noble SJ Mot. at 30/12 to 33/15.
The Court agrees with Noble that no reasonable jury could find that Noble had access to
Spectralyticss trade secrets through Lundeen. There is no dispute that Lundeen was an
independent contractor hired by Noble, not a Noble employee. See Bremer Decl. Ex. 12 at
NNI 139171 [Docket No. 125] (Sales Representative [i.e., a corporation that employed
-54-
Lundeen] represents and warrants that it is an independent contractor and is not the agent,
servant, or employee of Manufacturer [i.e., Noble].). And although independent contractors
may, under some circumstances, be deemed agents of their contracting partners, Spectralytics has
not even attempted to argue that Lundeen was an agent of Noble. See Restatement (Third) of
Agency 1.01 cmt. c (2006) ([T]he common term independent contractor is equivocal in
meaning and confusing in usage because some termed independent contractors are agents while
others are nonagent service providers.); Restatement (Second) of Agency 14N (1958) (One
who contracts to act on behalf of another and subject to the others control except with respect to
his physical conduct is an agent and also an independent contractor.). Thus the knowledge of
Lundeen as a non-agent independent contractor cannot be imputed to Noble. See Constructores
Tecnicos, S. de R.L v. Sea-Land Service, Inc., 945 F.2d 841, 847 (5th Cir. 1991) (holding that a
court must find that an agency relationship exists before the agents knowledge can be imputed to
the principal).
Accordingly, to show that Noble had access to Spectralyticss trade secrets through
Lundeen, Spectralytics must show not just that Lundeen learned of the trade secrets, but that he
actually communicated them to Noble. Lundeen denied passing any of Spectralyticss trade
secrets to Noble. Niehaus Decl. Ex. HH (Lundeen Dep.) at 212 [Docket No. 91]. Spectralytics
responds to that testimony not by offering evidence that Lundeen did pass trade secrets to Noble,
but instead by offering evidence that Lundeen is untrustworthy. Spectralytics Opp. Noble SJ
Mot. at 9-13, 32/14 to 33/15. But even if Lundeens testimony is completely ignored, the record
still contains no evidence that Lundeen communicated Spectralyticss trade secrets to Noble
-55-
an issue on which Spectralytics has the burden of proof. As a result, a reasonable jury could not
find that Noble gained access to Spectralyticss trade secrets through Lundeen.
A reasonable jury could, however, find that Noble had access to Spectralyticss trade
secrets through its principals, Larry, Chris, and Scott Noble. The key question is this: Did the
Nobles ever visit Spectralytics after the development by Spectralytics of the stent-cutting
machine whose design Noble allegedly stole? The parties do not dispute that the machine was
designed no earlier than December 1995. Spectralytics Opp. Noble SJ Mot. at 31/13 n.23, 34/16;
Noble SJ Mem. at 27. Therefore, if the Nobles last visit to Spectralytics took place before
December 1995, Noble necessarily lacked access to the allegedly stolen trade secrets.
There is only one piece of direct evidence that the Nobles visited Spectralytics after
December 1995: Oberg testified that Larry and Scott Noble visited Spectralytics twice, once in
1995 and once in 1996. Oberg Dep. at 80 (There was two dates they visited. One was like in
95 and one in 96.). There is also documentary evidence that the Nobles visited Minneapolis
but not necessarily Spectralytics in December 1995. Bremer Decl. Ex. 18 at NNI_138534-
39. And there is documentary evidence that unidentified Noble employees visited Minneapolis
though again, not necessarily Spectralytics in February 1996. Id. at NNI_138540-44.
Noble asks the Court to disregard Obergs testimony about a 1996 visit by the Nobles to
Spectralytics because, according to Noble, Oberg recanted the testimony. Noble says that Oberg
testified from memory, without consulting documents, and when confronted with his calendar,
Oberg confirmed there were only two visits, and confirmed that his calendar entries [for] those
visits were in June and August 1995. Noble Reply Mem. at 4 [Docket No. 136].
-56-
That is not quite what Oberg said. Oberg did confirm in his deposition, based on a
review of his calendar, that one of the Nobles visits took place on August 24, 1995. Oberg Dep.
at 712-13. But Oberg did not confirm that the August 24 visit was the second of the Nobles two
visits. After Nobles lawyer showed Oberg a page from his calendar dated June 30, 1995, the
lawyer and Oberg had this exchange:
Q: Does this refresh your recollection now that Jack Lundeen and
Larry Noble stopped by Spectralytics on June 30 around noon?
A: Thats what the document indicates. I dont recall the nature of
that visit.
Q: But that could be the first visit by Larry Noble, and then the
August 1995 visit being the second visit, accounting for the two
visits that you recall the Nobles making to Spectralytics, correct?
A: Thats possible.
Q: You dont recall a third visit, do you?
A: No.
Oberg Dep. at 714. Oberg admitted that it was possible that both of the Nobles visits to
Spectralytics took place in 1995. But he did not quite recant his earlier testimony that the Nobles
visited Spectralytics in 1996. Had he done so, the Court would grant summary judgment to
Noble on the trade-secrets claim. But, as the record stands, the claim must be tried.
In sum, based on Obergs deposition testimony and the documentary evidence of visits by
Noble employees to the Minneapolis area in 1996, there is a dispute of fact over the date of the
Nobles visits to Spectralytics. Because Nobles argument that it lacked access to Spectralyticss
trade secrets rests on the factual premise that the Nobles did not visit Spectralytics after
-57-
December 1995, the Court denies summary judgment to Noble on Spectralyticss trade-secrets
claim.
D. The 653 patent
In Count II of the First Amended Complaint, Spectralytics alleges that Noble and Cordis
infringed United States Patent 6,114,653 (the 653 patent). Cordis has counterclaimed for a
declaratory judgment that the 653 patent is invalid, unenforceable, and not infringed. Ans. &
Counterclaim C-E [Docket No. 31].
Spectralytics proposed a stipulation under which its claims and Cordiss counterclaims
with respect to the 653 patent as it relates to Cordis and Nobles disclosed stent-cutting methods
(past and current) would be dismissed with prejudice, while claims and counterclaims relating to
undisclosed stent-cutting methods (past, current, and future) would be dismissed without
prejudice. Goggin Decl. Ex. 8 [Docket No. 131]. Cordis objected to the stipulation to the extent
that it proposed dismissing any of Cordiss invalidity and unenforceability counterclaims with
prejudice, since those counterclaims were directed at the 653 patent generally and were not
specific to the accused device at issue in this case. Goggin Decl. Ex. 9.
Cordis now moves to dismiss Count II with prejudice (or for summary judgment of
noninfringement, which is basically the same thing). Cordis SJ Mem. at 37. Cordis asserts that
its corresponding declaratory-judgment claims should be dismissed without prejudice because
there is no longer a case or controversy with respect to the 653 patent. Id. at 38. Spectralytics
does not exactly oppose the motion it acknowledges that it no longer asserts Count II for
infringement of the 653 patent but asks the Court to dismiss both sides existing claims with
-58-
prejudice and to expressly reserve both sides future claims and defenses with respect to the 653
patent. Spectralytics Mem. Opp. Cordis Mot. S.J. at 37 [Docket No. 123]; Goggin Decl. Ex. 13.
The Court agrees with Cordis that the Court lacks subject-matter jurisdiction over
Cordiss counterclaims with respect to the 653 patent in light of Spectralyticss agreement to
dismiss Count II. See Benitec Australia, Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1349 (Fed. Cir.
2007) (finding no case or controversy, and thus no subject-matter jurisdiction, with respect to
declaratory-judgment counterclaims after plaintiff dropped infringement claims). The Court
therefore dismisses Count II with prejudice and dismisses Cordiss counterclaims related to the
653 patent without prejudice.
ORDER
Based on the foregoing and on all of the files, records, and proceedings herein, IT IS
HEREBY ORDERED THAT:
1. The disputed terms in United States Patent No. 5,852,277 are construed as set
forth in the body of this opinion.
2. Plaintiff Spectralytics, Inc.s Motion for Partial Summary Judgment [Docket
No. 93] is GRANTED IN PART as follows:
a. No machine made in 1994 by LPL for RMS is prior art under 35 U.S.C.
102 or 103.
b. The existence of a tailstock-less machine allegedly made in 1994 by LPL
for RMS cannot be considered among the secondary considerations related
to obviousness.
-59-
c. United States Patent No. 5,852,277 is NOT INVALID AS ANTICIPATED
by any machine made in 1994 by LPL for RMS.
d. The accused device is not prior art under 35 U.S.C. 102 or 103.
e. United States Patent No. 5,852,277 is NOT INVALID AS ANTICIPATED
by the accused device.
3. Plaintiff Spectralytics, Inc.s Motion for Partial Summary Judgment [Docket
No. 93] is DENIED in all other respects.
4. Defendant Norman Noble, Inc.s Motion for Summary Judgment [Docket No. 88]
is GRANTED IN PART as follows:
a. Defendant Norman Noble, Inc. did not have access to Spectralyticss trade
secrets through Jack Lundeen. In attempting to prove Counts III and IV of
the First Amended Complaint at trial, Spectralytics will not be permitted
to argue that defendant Norman Noble, Inc. misappropriated
Spectralyticss trade secrets through the actions of Jack Lundeen.
5. Defendant Norman Noble, Inc.s Motion for Summary Judgment [Docket No. 88]
is DENIED in all other respects.
6. Defendant Cordis Corporations Motion for Summary Judgment [Docket
No. 103] is GRANTED IN PART as follows:
a. Count II of the First Amended Complaint [Docket No. 30] is DISMISSED
WITH PREJUDICE AND ON THE MERITS.
-60-
b. Paragraphs C, D, and E of Cordiss counterclaim [Docket No. 31] are
DISMISSED WITHOUT PREJUDICE for lack of subject-matter
jurisdiction.
7. Defendant Cordis Corporations Motion for Summary Judgment [Docket
No. 103] is DENIED IN ALL OTHER RESPECTS.
Dated: September 15, 2008 s/Patrick J. Schiltz
Patrick J. Schiltz
United States District Judge
 

 
 
 

  What day were you injured?

  / /


  What caused your injuries?
Traffic/Bicycle Accident
Work-Related Injury
Wrongful Death
Dog Bite
Slip and Fall
Other:


  How have your injuries affected

  your life?

 


  What kinds of medical care
  professionals have you seen?

 


  What has your treatment cost?

 

  Is Insurance Involved?
My insurance may cover
        this.

Someone else's insurance
        may cover this.

I already filed a claim.
I rejected a settlement
        offer.

I accepted a settlement
        offer.

  Were there any witnesses?
Bystanders Witnessed This.
Police Responded and Filed
        a Police Report

Police Responded but Did
        Not File a Police Report


 

 

          By visiting this page or clicking the
  "submit" button above, you agree
  that you have read and accept this   "disclaimer".
 
Copyright © Michael E. Douglas, Attorney at Law, Saint Paul MN. All Rights Reserved.
Minnesota Law Firm representing Personal Injury, Car / Auto Accident, Workers Compensation, Medical Malpractice, Social Security Disability claims.
Dedicated to Injured Workers, Victims of Negligence, Car Accidents, Victims of Fraud, and those in need of legal assistance.