Spectralytics, Inc. v. Cordis Corp.
649 F.3d 1336
| Fed. Cir. | 2011Background
- Spectralytics sued Cordis for patent infringement of the '277 patent; trial occurred in Minnesota before a jury.
- The jury found the '277 patent valid, infringed, and willfully infringed, with damages at 5% of Noble’s infringing sales to Cordis.
- Cordis and Norman Noble supplied stents to Cordis under an exclusive contract, and Cordis indemnified Noble for patent infringement.
- Spectralytics’ improved laser-cut stent machine mounted the workpiece fixture on the cutting head, increasing precision over prior Swiss-style machines.
- The district court granted a permanent injunction, accounting, and interest, and addressed motions for new trial, JMOL, remittitur, enhanced damages, and attorneys’ fees.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Obviousness of claim 1 | Cordis could not prove obviousness. | Swiss-style art taught away; obvious to modify. | Obviousness not proved; jury findings sustained. |
| Damages: reasonable royalty amount | Jury should award higher royalty (e.g., 20%). | 5% within the range; alternatives insufficient. | 5% royalty supported by substantial evidence; not clearly erroneous. |
| Willful infringement and enhancement | District court misapplied Seagate standards to enhancement. | Enhanced damages should be denied or limited. | Remand for Read-factor-based enhancement determination; Seagate guidance applied, not full Seagate framework. |
| Attorney fees | Exceptional case finding should support fees after willfulness. | If not exceptional, fees should be denied. | Remand to reconsider attorney fees after enhanced damages determination. |
Key Cases Cited
- Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133 (U.S. 2000) (clear standards for JMOL and substantial evidence)
- Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992) (Read factors for enhanced damages)
- Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (abrogation of due-care presumption; separate Read-factor analysis)
- i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (distinct tests for willfulness vs. enhancement; consideration of investigation)
- Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364 (Fed. Cir. 2002) (requirement to explain non-exceptional ruling on fees when willful)
- Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970) (non-exhaustive list of factors for reasonable royalty)
- Grain Processing Corp. v. Am. Maize-Prods. Co., 185 F.3d 1341 (Fed. Cir. 1999) (substitute availability and substitutability in damages)