Koninklijke Philips N v. v. Zoll Medical Corporation
656 F. App'x 504
| Fed. Cir. | 2016Background
- Philips and Zoll each manufacture external (non-implanted) defibrillators; Philips sued Zoll for patent infringement and Zoll counterclaimed. A jury found asserted waveform and self-test claims of Philips valid and directly infringed by Zoll, found Zoll’s electrode patent claims valid and Philips infringing, but found no contributory/induced infringement by Zoll for Philips’ patents. District court denied JMOL motions; both parties appealed.
- Philips’ asserted patents: (1) ‘‘waveform’’ patents — automated/subject-adaptive shock-shaping based on monitored electrical parameters (’454, ’905, ’212); (2) ‘‘self-test’’ patents — automatic periodic self-testing and visual/audible status indicators (’460, ’374). Zoll asserted an electrode patent (’526) directed to electrodes/electrolytic gel having resistance ≥1 Ω to reduce skin burns.
- Key factual evidence: prior-art references (Kroll, Wiley, VIVAlink brochure, Zoll PD1400) were litigated for anticipation/obviousness; Zoll admitted extensive clinical testing and market use of its products; Philips sent an infringement letter to Zoll in July 2009.
- Jury findings (relevant): several Philips waveform and self-test claims found not invalid and directly infringed by Zoll; Zoll’s ’526 electrode claims found not invalid and Philips found to directly infringe. Damages were bifurcated for later trial.
- Procedural posture: First Circuit standard (de novo review of JMOL; reasonable-jury evidence suffices to sustain verdict). This opinion affirms in part, reverses in part, vacates in part, and remands for further proceedings (including a new invalidity trial on certain ’526 claims).
Issues
| Issue | Philips’ Argument | Zoll’s Argument | Held |
|---|---|---|---|
| Anticipation of waveform claims by Kroll (’905 claims 4,8) | Kroll does not disclose shaping the waveform based on a monitored patient-dependent parameter | Kroll’s voltage behavior is patient-dependent and thus anticipates | Affirmed — reasonable jury could find Kroll does not disclose the claimed shaping step |
| Anticipation of self-test claim 7 (’460) by Wiley | Wiley lacks the claimed multiple periodic automatic self-tests | Wiley discloses hourly CPU test and daily autotest (two periodic schedules) | Reversed — JMOL granted for anticipation (Wiley discloses both periodic tests) |
| Anticipation of self-test claim 43 (’374) by VIVAlink brochure | VIVAlink does not disclose a ‘‘fail-safe visual display’’ or powering-on in response to a test signal | VIVAlink describes automatic periodic tests and a visual warning that remains indefinitely (fail-safe) | Reversed — JMOL granted for anticipation (VIVAlink discloses claim 43) |
| Obviousness of self-test claims 42, 67–68 (’374) over prior art (PD1400, etc.) | Automatic periodic self-tests were nonobvious (battery management, long-felt need, commercial success) | Automating known user-initiated tests would have been obvious | Affirmed — jury verdict of nonobviousness sustained |
| Direct infringement of waveform & self-test method/device claims | Philips: evidence of Zoll’s clinical testing and market use demonstrates Zoll directly used/infringed the methods; device claims require electrodes "in electrical communication with a patient" | Zoll: its devices perform test pulses or customers — not Zoll — perform infringing acts; sale of device alone not direct infringement | Affirmed in part: direct infringement by Zoll’s own use (testing/trials) upheld; sale alone does not constitute direct infringement when claims require electrodes to be in contact with a patient |
| Contributory infringement (Philips) for self-test claims (’374) | Zoll contributed to direct infringement by selling devices that automatically perform patented self-tests; Zoll had notice (July 2009) | Zoll lacks requisite knowledge or had reasonable good-faith noninfringement belief; devices have substantial noninfringing uses | Reversed (JMOL for contributory infringement) as to claims 42 and 67–68 of ’374 — evidence establishes direct infringement, knowledge (by 2009), lack of substantial noninfringing use, and materiality; for some waveform claims, Zoll’s reasonable claim construction negated knowledge and contributory liability was not sustained |
| Indefiniteness of Zoll’s electrode claims (’526) | Claims ambiguous because test conditions (temperature, electrode age, prior shocks) not specified — do not inform with reasonable certainty | Jury verdict should stand; claims are understandable by skilled artisan | Court finds jury instruction used pre-Nautilus language ("insolubly ambiguous") which was legally erroneous and prejudicial; vacated jury verdict and ordered new trial on indefiniteness for claims 1, 8–9, 11–12, 19, 24–25 of ’526 |
| Exclusion of prior-art evidence (Marquette electrode, Physio‑Control 510(k)) | Excluded evidence (Marquette device testimony and 510(k) doc) was wrongly barred and could affect invalidity trial | District court properly excluded 510(k) as not shown to be publicly accessible; exclusion of Marquette evidence tied to 510(k) ruling | Mixed: exclusion of Physio‑Control 510(k) affirmed; exclusion of Marquette device evidence was an abuse of discretion (remanded to determine corroboration sufficiency); new invalidity trial may include corroborated Marquette evidence |
Key Cases Cited
- Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305 (Fed. Cir. 2013) (jurisdictional / interlocutory appeal principles)
- American Calcar, Inc. v. American Honda Motor Co., 651 F.3d 1318 (Fed. Cir. 2011) (JMOL standard guidance)
- Soto‑Lebron v. Fed. Express Corp., 538 F.3d 45 (1st Cir. 2008) (regional-circuit JMOL standard)
- Marcano Rivera v. Turabo Med. Ctr. P’ship, 415 F.3d 162 (1st Cir. 2005) (‘‘overwhelming evidence’’ standard for overturning jury)
- ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314 (Fed. Cir. 2012) (anticipation is a factual question)
- MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159 (Fed. Cir. 2015) (conclusory expert testimony insufficient to sustain jury verdict)
- Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc., 589 F.3d 1179 (Fed. Cir. 2009) (same principle re: expert conclusory statements)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (indefiniteness standard: must inform with reasonable certainty)
- Ericsson, Inc. v. D‑Link Sys., Inc., 773 F.3d 1201 (Fed. Cir. 2014) (limits on finding direct infringement by apparatus sellers)
- Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010) (separate-and-distinct analysis for substantial noninfringing use)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (component separability in contributory infringement analysis)
- Ricoh Co. v. Quanta Comput., Inc., 550 F.3d 1325 (Fed. Cir. 2008) (substantial noninfringing use / product embedding considerations)