899 F. Supp. 2d 1188
W.D. Okla.2012Background
- Plaintiff owns U.S. Patent No. 6,083,213 covering a left coronary angioplasty using a guiding catheter via femoral approach.
- Claims 1–2 describe a catheter method that engages the aorta’s inner wall with a 1.5 cm length when positioned in the left ostium.
- Defendants sold and marketed Medtronic EBU Guiding Catheters alleged to infringe the patent.
- Jury trial (Jan 2012) found infringement by defendants, with inducement and contributory infringement, willfulness, and a royalty of $9,900,000.
- Court granted partial summary judgment on validity; issues of obviousness and prior public use reserved for trial, but Defendants withdrew validity defenses during trial.
- Post-trial motions: JMOL denied on infringement but granted on willfulness; prejudgment interest and enhanced damages/fees addressed in final rulings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Direct infringement proven? | Voda. | Medtronic challenged validity/undermined infringement. | No JMOL; infringement supported by trial evidence. |
| Inducement and contributory infringement proven? | Inducement shown by defendants’ publications and training. | No clear intent or no substantial noninfringing use. | Sustained contributory infringement; inducement by intent found. |
| Willfulness proven? | Defendants acted with knowledge or obviousness of infringement. | Defenses not objectively unreasonable. | Willfulness not proven; Seagate objective prong not satisfied; JMOL reversed for willfulness. |
| Damages support for 14.3% royalty? | Dr. Wu supported higher rate; damages within credible range. | Rate too high; expert testimony inconsistent. | Royalty within evidentiary bounds; not undue. |
| Prejudgment interest, enhanced damages, attorney’s fees? | Not undue delay; prejudgment interest appropriate. | Objectively unreasonable conduct warranted enhanced damages/fees. | Prejudgment interest awarded; enhanced damages and attorney’s fees denied. |
Key Cases Cited
- Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed.Cir. 2009) (infringement requires practicing all steps of the claimed method)
- Metabolite Laboratories, Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354 (Fed.Cir. 2004) (intent to induce infringement shown by circumstantial evidence)
- In re Seagate Tech., LLC, 497 F.3d 1360 (Fed.Cir. 2007) (two-prong test for willful infringement; objective prong first)
- Bard Peripheral Vascular, Inc. v. Gore & Assocs., 682 F.3d 1003 (Fed.Cir. 2012) (objective prong of Seagate treated as question of law with mixed questions of fact)
- Gasperini v. Center for Humanities, Inc., 518 U.S. 415 (U.S. 1996) (standard for granting a new trial; abuse of discretion if verdict against weight of the evidence)
- Jurgens, 80 F.3d 1566, 80 F.3d 1566 (Fed.Cir. 1996) (enhanced damages and attorney’s fees analysis; two-step Read Corp. factors)
- Read Corp. v. Portee, Inc., 970 F.2d 816 (Fed.Cir. 1992) (factors for evaluating enhanced damages under §284)
- Professional Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49 (U.S. 1993) (rejections of objectively unreasonable defenses in willfulness analysis)