Cordis Corporation (“Cordis”) appeals the United States District Court for the District of Delaware’s grant of judgment as a matter of law (“JMOL”) that Boston Scientific Corporation and Boston Scientific Scimed, Inc. (collectively, “BSC”) do not literally infringe claim 25 of U.S. Patent No. 5,879,370. Cordis also appeals the district court’s denial of JMOL on the issue of noninfringement by the reverse doctrine of equivalents. BSC cross-appeals the district court’s judgment that U.S. Patent Nos. 5,643,312 (the “'312 patent”) and 5,879,370 (the “'370 patent”) are not unenforceable due to inequitable conduct. For the reasons stated below, we affirm.
Background
This dispute relates to balloon-expandable stents, devices which are used to treat occluded blood vessels. We have previously summarized the importance of such stents:
The development of balloon-expandable coronary stents marked a significant advance in the treatment of coronary artery disease by providing an alternative to balloon angioplasty and bypass surgery. In balloon angioplasty, an inflated balloon crushes built-up plaque against the arterial wall to improve blood flow. The balloon is withdrawn at the end of the procedure, however, which allows the artery to close again over time. A stent of the sort disclosed in the patents at issue in this case is mounted on an angioplasty balloon and is forced to expand against the arterial walls when the *1351 balloon is inflated. When the balloon is deflated and withdrawn, the stent retains its shape and remains in the artery to keep it open.
Cordis Corp. v. Medtronic AVE, Inc.,
On February 25, 1994, Robert E. Fischell and two of his sons, David R. Fischell and Tim A. Fischell, filed U.S. Patent Application No. 08/202,128 (the “'128 application”), which ultimately issued as the '312 patent. For the first two years after the '128 application was filed, Robert Fischell prosecuted the application pro se. He did, however, retain an attorney, Morton J. Rosenberg, to prosecute foreign counterparts. 1
On July 17, 1995, Mr. Rosenberg forwarded to Robert Fischell a “Search Report from the European Patent Office” (“EPO Search Report”) regarding a European counterpart to the '128 application. The EPO Search Report identified six references, and categorized them according to relevance. Category “X” documents were “particularly relevant if taken alone,” category “Y” documents were “particularly relevant if combined with another document of the same category,” and category “A” documents were “technological background.” J.A. 11523. Only one reference, European Patent Application 566807 (“Sgro”), was identified as a category X reference. In an accompanying letter, Mr. Rosenberg explained:
the only reference which is stated as being particularly relevant to Claim 1 is European Patent Application # 566807 whose inventor is Jean-Claude Sgro. We have made a Patentee Search to determine whether we have any corresponding Patent in the United States but have come up negatively. It may pay us to make a translation from the French to determine if this is relevant.
J.A. 11946.
As in the original '128 application, the only claim in the European application that mentioned undulating longitudinals was claim 8. The EPO Search Report identified four “Y” references as being relevant to that claim. Among the references so identified was U.S. Patent No. 4,856,516 (“Hillstead”), a patent directed to, inter alia,
[a] stent for reinforcing a vessel within a subject comprising a cylindrical support dimensioned to fit within an interior of said vessel constructed from an elongated wire bent to define a series of relatively tightly spaced convolutions or bends, said wire also bent in the form of a plurality of loops....
Hillstead, col.4 11.37-42 (emphasis added). Figure 2A from Hillstead, also displayed on the cover page of that patent, is reproduced below, along with Figure 8 from the '312 patent for comparison.
*1352 [[Image here]]
[[Image here]]
In the course of this case, Mr. Rosenberg testified it was his practice to “carefully” review the “X” references in EPO search reports, i.e., those that — like Sgro — are “particularly relevant if taken alone.”
Cordis Corp. v. Boston Scientific Corp.,
*1353 Just prior to the July 1, 1997, issuance of the '312 patent, the Fischells filed U.S. Patent Application 08/864,221 (“the '221 application”) as a continuation of the '128 application. Robert Fischell was thereafter shown a copy of Hillstead during a meeting with Cordis’s counsel. 3 Robert Fischell testified that this meeting — apparently in April 1998 — was the first time he specifically recalled seeing Hillstead.
In May 1998, an information disclosure statement (“IDS”) regarding the '221 application was filed with the Patent and Trademark Office. The IDS cited forty-one U.S. patents, seven foreign patent documents, and thirteen articles. Hillstead, along with the other three “Y” references from the EPO Search Report, was included in the disclosure. Among the seventy references ultimately identified, Hillstead was never emphasized as being of particular interest. The '221 application subsequently issued as the '370 patent, with Hillstead among the “References Cited” on the face of the patent.
The present litigation began on October 3, 1997, when Cordis filed suit against Medtronic AVE, Inc., BSC, and Scimed Life Systems, Inc. As relevant to this appeal, Cordis ultimately accused BSC’s NIR stent of infringing the '312 and '370 patents. Following a multi-week trial, a jury found that BSC’s NIR stent does not literally infringe claim 21 of the '312 patent, and claim 21 is not invalid for obviousness or lack of written description.
Cordis Corp. v. Medtronic AVE, Inc.,
Both parties moved for JMOL. The district court granted BSC’s motion for JMOL that the NIR stent does not literally infringe claims 25 and 26 of the '370 patent. Id. at 354. Consequently, Cor-dis’s motion for JMOL on the reverse doctrine of equivalents was denied as moot. Id. BSC’s motion for JMOL that claim 25 of the '370 patent and claim 21 of the '312 patent are invalid for lack of written description was also denied. Id. at 354-55.
Following the jury trial, the district court conducted a four-day bench trial on the issue of unenforceability due to inequitable conduct. BSC contended that the patentees failed to disclose Hillstead during the prosecution of the '312 patent, and the patentees knew, or should have known, that Hillstead would be material to the examiner’s consideration of patentability. Id. at 362. After making findings of fact, the district court concluded BSC proved “by clear' and convincing evidence the threshold levels of materiality and intent with respect to nondisclosure of the Hill-stead patent” during the prosecution of the '312 patent. Id. at 367. The court found “[t]he patentees purposefully neglected their responsibility of candor to the PTO by ‘putting their heads in the sand’ regarding prior art related to [undulating longitudinals].” Id. The court then concluded that the '370 patent’s prosecution was tainted by the lack of candor in the '312 prosecution because, when the patentees finally disclosed Hillstead, they did so in *1354 the midst of numerous other references and without identifying it as being of particular interest. Id. at 368. The district court therefore held both patents unenforceable due to inequitable conduct. Id.
Both parties appealed. Cordis challenged the portions of the judgment relating to literal infringement, the reverse doctrine of equivalents, and unenforceability, all with respect to the '370 patent.
Cordis Corp. v. Boston Scientific Corp.,
On remand, the district court made additional findings, but concluded “[u]pon further reflection, the evidence of record that tends to support a finding of deceptive intent is not clear and convincing.”
Cordis III,
Discussion
I.
We turn first to the issue of infringement. The infringement analysis is a two step inquiry. “First, the court determines the scope and meaning of the patent claims asserted, and then the properly construed claims are compared to the allegedly infringing device.”
Cybor Corp. v. FAS Techs., Inc.,
On appeal, only dependent claim 25 of the '370 patent is at issue with respect to JMOL of no infringement. That claim, along with independent claim 22 on which it depends, reads:
*1355 22. A pre-deployment balloon expandable stent structure adapted for percutaneous delivery to the curved coronary arteries, the stent structure being generally in the form of a thin-walled metal tube having a longitudinal axis, the stent structure having a multiplicity of closed perimeter cells, each cell having one or more undulating sections, each undulating section having a generally curved shape and having a first end point and a second end point wherein a line drawn from the first end point to the second end point is generally parallel to the stent’s longitudinal axis.
25. The stent of claim 22 wherein the undulating section of each closed perimeter cell comprises a “U” shaped curve.
'370 patent col.6 11.17-26, 35-36 (emphasis added).
During claim construction, the parties disputed whether the term “undulating” required both a crest
and
a trough, as opposed to a crest
or
a trough.
Cordis I,
As noted above, BSC moved for JMOL that the NIR stent does not literally infringe claim 25 of the '370 patent. Jury Trial Tr. 1576:2-1577:7. When the motion was subsequently renewed, BSC argued that “Cordis inappropriately altered the parties’ and the court’s understanding of the term ‘undulating’ and, under the intended construction of the term, the evidence presented at trial does not support a conclusion that the NIR stent contains ‘undulating’ sections.”
Cordis I,
A.
Cordis correctly notes that a party prevailing on an issue of claim construction cannot argue for a differing claim construction following an adverse jury verdict.
E.g., Hewlett-Packard Co. v. Mustek Systems, Inc.,
Cordis does not challenge the district court’s construction of the term “undulating” as requiring “at least a crest and a trough.” We therefore do not review the construction itself, and instead focus on what that construction means. Based on the ordinary meaning of the construction as given to the jury, it is apparent that the construction requires multiple “waves.” See Webster’s Third New International Dictionary 2586 (1968) (defining “wave” as “a shape or outline having successive curves like those of ocean waves: one of the crests of such a form or a crest with its adjacent trough”). Accordingly, the terms “crest” and “trough,” as used in district court’s claim construction, implicate changes of direction, with the curve extending beyond the point of inflection. The district court’s post-verdict elaboration on this point only clarified what was inherent in the construction. Doing so was not error; it merely made plain what, as we detail below, should have been obvious to the jury.
We acknowledge that the terms “crest” and “trough” can, in some cases, merely indicate points on a curve. Here, however, we are not persuaded by Cordis’s citation to expert testimony and portions of dictionary entries defining a “crest” as, inter alia, “the top” or “highest point of the waveform.” So defined, the requirement in the construction for “both a ‘crest’ and a ‘trough’ ” becomes meaningless: every trough would necessarily include a “highest point” that would satisfy Cordis’s definition of “crest.” Indeed, Cordis’s expert testified as much:
Q. So does every letter U shape have two crests?
A. Well, I haven’t looked at every. I mean, some people’s handwriting is illegible and certainly doesn’t, but, yes.
Jury Trial Tr. 989:20-23. Cordis’s definition would thus impermissibly render superfluous the requirement for a “crest” in addition to a “trough.”
Our conclusion about the ordinary meaning of the jury instruction is bolstered by the parties’ arguments during claim construction. Accordingly, this is not a case where Cordis can plead surprise at the trial court’s clarification. Indeed, during the Markman phase, BSC raised claim construction arguments from which the district court’s understanding logically flows and which, indeed, mandate it. BSC specifically pointed to arguments made during the prosecution of the '128 application in which the Fischells’ “undulating” structure was distinguished from structures that were merely curved. 5 Cordis Corp. v. Boston Scientific Corp., No. 1:98—cv-197, BSC Reply Br. in Support of Defendant’s Markman Memorandum at 4-8 (DE 133); see also Markman Hr’g Tr. 37:23-39:19.
Claim terms must be construed in light of all of the intrinsic evidence, which includes not only the claim language and patent written description, but also the prosecution history.
ERBE Elektromedizin GmbH v. Canady Tech. LLC,
B.
Having found no error in the district court’s clarification of its construction of the term “undulating,” we turn to the merits of its grant of JMOL that claim 25 was not infringed by BSC’s NIR stent. “This court reviews without deference a district court’s grant of JMOL under Federal Rule of Civil Procedure 50.”
LNP Eng’g Plastics, Inc. v. Miller Waste Mills, Inc.,
As did the district court, we focus on whether the NIR stent satisfies the “undulating sections” limitation of claim 25. Cordis identifies three categories of evidence supporting the jury verdict: the testimony of its expert, various photographs, and engineering drawings. Cordis Br. 48-50. BSC correctly argues that we must disregard the testimony of Cordis’s expert that the NIR stent has two crests and a trough because, as the quotation in Part II-A indicates, that testimony was based on an incorrect understanding of the claim construction.
See Frank’s Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd.,
Referencing the drawing below, copied from Cordis’s brief and extensively relied on by both parties, the NIR stent includes so-called C-loops stacked circumferentially about the stent body, with longitudinal members known as U-loops in between.
[[Image here]]
Cordis Br. 11; see also Jury Trial Tr. 1510:10-24. The drawing leaves unclear where the U-loops end and the C-loops begin. See Points A, B, and C, as labeled by this court. The photographs and engineering drawings in evidence are, however, more clear. In those renderings, if the width of the C-loops is treated as approximately constant, with the C-loops maintaining the same curvature as they display before the junction with the U-loops, the geometry resembles points B and C, rather than point A. See, e.g., J.A. 12500-530. The U-loops thus merely level out, and they lack the change in direction required for literal infringement. We note that our conclusion is consistent with the testimony of Cordis’s expert that the “[ujndulating [section] is fitted onto the end of the ring,” i.e., the C-loops, and is “[a] cup, a claw on the end of the ... ring element.” Jury Trial Tr. 986:21-987:18; see also Cordis Br. 48-49. It is also consistent with the testimony of BSC’s expert that the U-loops include a trough, but no crest as that term was used in the claim construction. See Jury Trial Tr. 1625:7-21. It is not, however, consistent with the jury’s verdict on literal infringement.
Indeed, absent the testimony of Cordis’s expert regarding troughs and crests, and the corresponding testimony concluding infringement, we find very little evidence to support the jury’s verdict that claim 25 was literally infringed. Substantial evidence, as required to support the jury’s verdict, demands more than a mere scintilla.
Johnson,
II.
We turn next to BSC’s cross-appeal of the district court’s judgment that the '312 and '370 patents are not unenforceable due to inequitable conduct. BSC first argues that the enforceability of the '312 patent is not properly before this court and, regardless, the trial court violated our mandate in Cordis II by revisiting the issue of unen *1359 forceability vel non. BSC also argues that the trial court’s findings in Cordis III are, on the merits, clearly erroneous. We address each in turn.
A.
In its Corrected Reply Brief in Cordis II, Cordis stated that “the '312 patent is not being asserted by Cordis and its enforceability is not the subject of this appeal. This appeal concerns a different and separate patent — the '370 patent.” Cordis Cordis II Corrected Reply Br. 1. BSC correctly suggests that this statement constitutes a waiver by Cordis of any challenge to the district court’s finding in Cor-dis I that the '312 patent is unenforceable. BSC Br. 47-48. BSC errs, however, in concluding that the waiver rendered the associated judgment unreviewable.
This court properly reaches “waived” issues when they are necessary to the resolution of other issues directly before it on appeal.
See Pfizer, Inc. v. Teva Pharms. USA
Free.,
In our previous opinion, we characterized Cordis as “challenging] the district court’s conclusion that the patentees engaged in inequitable conduct during the prosecution of [the '312 patent] that rendered the '370 patent unenforceable.”
Cordis II,
B.
BSC next argues that the district court violated our mandate in
Cordis II
by reconsidering its finding of intent to deceive. Our review of the district court’s actions implicates the scope and interpretation of our mandate, which we review without deference.
See Engel Indus., Inc. v. Lockformer Co.,
In
Cordis II,
we stated that “[i]t is unclear to us precisely what the district court has found with regard to [Robert] Fischell’s and Mr. Rosenberg’s knowledge. In particular, we are uncertain whether the district court faulted [Robert] Fischell for merely failing to conduct a prior art search, or whether the district court faulted [him] for ‘cultivating ignorance’ with
*1360
respect to the Hillstead reference.”
On remand, the district court made detailed findings regarding the prosecution of the '312 patent.
Cordis III,
We find no error in the district court’s actions. Implicit in our request for additional findings was a conclusion that the findings before us were lacking. Rather than reversing the district court’s judgment, we requested specific findings on issues that we identified as outcome determinative. The district court’s subsequent conclusion that the record was insufficient to make the requested findings was entirely consistent with our mandate. For the same reason, our mandate must be read to have left unenforceability vel non an open issue. It would be illogical for this court to remand for findings on unresolved outcome determinative issues, while simultaneously foreclosing reconsideration of the outcome after the district court considered those issues for the first time.
C.
Finally, BSC directly challenges the district court’s supplemental findings of fact and the resulting determination that the '312 and '370 patents are not unenforceable. BSC Br. 53-59. On appeal, “[w]e review the district court’s findings of fact for clear error and [its] ultimate determination of whether inequitable conduct occurred for abuse of discretion.”
Warner-Lambert Co. v. Teva Pharms. USA, Inc.,
In
Therasense, Inc. v. Becton, Dickinson & Co.,
we made clear that a finding of inequitable conduct requires specific intent to deceive, and “to meet the clear and convincing evidence standard, the specific intent to deceive must be ‘the single most reasonable inference able to be drawn from the evidence.’ ”
The record reflects that in July 1995, Robert Fischell’s attorney forwarded him a copy of an EPO Search Report identifying Hillstead, as well as a copy of the Hillstead patent. The accompanying letter, however, drew attention to a different reference — Sgro—as the “only reference ... being particularly relevant.” J.A. 11946. Robert Fischell consistently testified that, while he looked at the Sgro *1361 reference in 1995, he did not recall reviewing Hillstead until after the '312 patent had issued. The district court explicitly found that no communications in the record called Hillstead to Fischell’s attention until after the '312 patent issued, and that Fischell relied on his attorney’s advice visa-vis the EPO Search Report. Notably, when Hillstead was eventually brought to Fischell’s attention, he promptly disclosed it to the Patent and Trademark Office in connection with the '370 prosecution, albeit without emphasis.
The district court ultimately concluded that “the evidence cited in support of finding inequitable conduct is not clearly more compelling than the evidence cited in support of not finding inequitable conduct.”
Cordis III,
Conclusion
We affirm the district court’s grant of judgment as a matter of law that claim 25 of the '370 patent is not literally infringed by the NIR stent. We also affirm the district court’s conclusion that the '312 and '370 patents are not unenforceable due to inequitable conduct. As did the district court, we decline to reach Cordis’s appeal on the issue of reverse doctrine of equivalents because that issue is moot in light of our holding on literal infringement.
AFFIRMED.
No costs.
5.
Notes
. At the time the '128 application was filed, Robert Fischell had personally prosecuted more than twenty patents. Mr. Rosenberg was substituted as the attorney prosecuting the '128 application in February 1996.
. Of relevance here, the Fischells specifically distinguished U.S. Patent No. 5,269,802 ("Garber”) as lacking "the undulating shape or contour” in the longitudinals of their own claimed invention. J.A. 254-55. The Fischells similarly distinguished other references *1353 as not providing "the undulating sections of each longitudinal structure being of a generally curved shape.” J.A. 235-36.
. Through a series of transactions in 1998 and 1999, Cordis acquired various assets of the Fischells’ company, IsoStent, and agreed to assume certain of IsoStent’s obligations to the Fischells.
. Returning to this court for a second time, this case is but one installment — albeit, at nearly fourteen years, perhaps the longest — in an ongoing and epically expensive litigation saga known as the "Stent Wars.”
E.g.,
Barnaby J. Federer,
Keeping Arteries Cleared and the Courts Clogged,
N.Y. Times, Oct. 4, 2007, at Cl;
see also Spectralytics, Inc. v. Cordis Corp.,
. The argument in question was made in the course of the '128 application, which resulted in the '312 patent, while only the claims of the '370 patent are at issue in this portion of the appeal. Arguments made in the course of prosecuting the '128 application are relevant, however, because a disclaimer in the parent application carries forward into the construction of the same claim term in the child.
Verizon Servs. Corp.
v.
Vonage Holdings Corp.,
. This appears to be a case where BSC proved the threshold level of intent to deceive, but that proof was rebutted by Robert Fischell’s good faith explanation.
See Therasense,