*1 CONCEPTS, INC., Li- KINETIC KCI USA, Inc.,
censing, Inc., KCI KCI Resources, KCI Manufactur-
Medical
ing, Holdings Limited, and Medical
Plaintiffs, University
Wake Forest Health
Sciences, Plaintiff-
Appellant,
v. NEPHEW, INC.,
SMITH &
Defendant-Appellee.
No. 2011-1105. States Court of Appeals,
United
Federal Circuit.
Aug. *4 Powers, Weil,
Matthew D. Gotshal & LLP, Shores, CA, Manges of Redwood him argued plaintiff-appellant. With on the brief were Elizabeth Stotland Weis- wasser, Sandel, Wu, Jennifer H. Peter Wiggins, Danielle Rosenthal and Erin York, NY. Of counsel Andrew New was Swanson Brown. Knobbe, Martens, Re,
Joseph R. Olson Bear, Irvine, LLP, CA, argued for & him the brief defendant-appellee. With Lesniak, Swaroop were James F. Shelia N. Lea. Of counsel on the Christy G. Gorman, Neph- & brief Mark J. Smith ew, Inc., Cordova, TN. BRYSON, DYK and
Before O’MALLEY, Judges. Circuit filed Opinion for the court Circuit Judge DYK Judge O’MALLEY. Circuit concurs the result.
O’MALLEY, Judge. large Circuit are too to spontaneously close” is 11.11-12; difficult. patent '081 col.1 '651 University Forest Health Sciences Wake patent col.1 11.29-30.“Wound closure re- Forest”) (“Wake appeals the district quires epithelial subcutaneous tis- grant judgment court’s as a matter of migrate sue from the wound border to- (“JMOL”) invalidity for law obviousness. ward the wound.” '081 col.2 11.49- (“S Nephew, In granting Smith & Inc.’s & 50. To migration, facilitate such doctors N”) JMOL, motion for the district court closures, commonly use mechanical such as jury’s overturned the determination that S staples. sutures or Id. at col.1 11.24-25. prove & N had failed to that the asserted Such mechanical closures create tension on patents claims of the in suit were obvious. skin, which encourages epithelial mi- that, We conclude on the basis gration. Id. at col.l 11.25-28. “While su- findings, factual S & N failed to establish turing stapling of wounds widely convincing clear and evidence that the practiced, major it has a drawback: claims were Accordingly, obvious. we re- tensile required force to achieve closure verse and remand.1 *5 staples sutures or very high causes localized stresses at the suture insertion Background points, resulting rupture of the tis-
sue at points.” these Id. at col.111.28-33. This rupturing healing inhibits of the I. Asserted Patents wound. Id. at col.l 11.33-35. Additionally, Inc., Concepts, Kinetic Licensing, KCI it is not feasible to large open suture some USA, Inc., KCI KCI Medical Re- wounds. Id. at col.1 11.28-33. sources, Manufacturing, KCI and Medical To address these shortcomings, the in- “KCI”) Holdings (collectively Limited and vention applies “negative pressure to a brought N, Wake Forest against suit S & wound over an area promote sufficient to alleging infringement of U.S. Patent Nos. migration epithelial and subcutaneous (“'651 7,216,651 patent”) 5,645,081 and wound, tissue toward the negative with the (“'081 patent”). Wake Forest is the owner pressure being maintained for a time suffi- patents,- the asserted and KCI are the cient to facilitate closure of the wound.” exclusive licensees patents. of the Both 11.45-49; Id. at col.2 patent '651 col.4 11.18— patents claim methods apparatuses and for (“[A] 23 treating method of damage tissue treating by difficult-to-heal wounds apply- is provided which comprises applying a ing negative pressure, suction or e.g., '651 negative or pressure reduced to a wound Abstract; patent patent '081 Abstract. over an promote area sufficient to Wake Forest and KCI asserted that S & migration epithelial and subcutaneous N infringes apparatus claims and 5 of tissue toward the wound and for a time patent '081 infringement induces period sufficient to facilitate closure of the 42, 109, 116, of method claims and 121 of wound.”). patent Claim of the '081 patent. '651 claim 42 patent of the '651 are illustrative:
As described patents, the asserted 2. An apparatus facilitating for medical “treatment of open wounds, wounds that healing of comprising: raises, us, 1. The purports concurrence and then respond matters not before we do not resolve, issues were neither raised except nor the concurrence to the extent our dis- court, discussed before the patents district and were cussions of the and the art al- argued appeal. ready Because is about do so. negative locating porous compris- iii. a material creating for a means vacuum and 0.99 at- between about 0.1 pressure ing synthetic polymer a under said cover including on the of skin area mospheres wound; at the wound; surrounding the adhesively sealing adhering iv. operatively means associated sealing periphery of said cover to tissue sur- maintaining for vacuum means with said the wound to form a continu- rounding pressure on said wound negative said seal; ous surrounding the skin said contacting wound; and operably suction connecting v. said at the open-cell polymer positioning for pro- for port system with said vacuum sealing pre- means wound within ducing pressure; said reduced over-growth of tissue in the venting the trap vi. between interposing fluid wound. port said suction and said vacuum col.9 11.50-65. patent '081 source; maintaining and vii. reduced a wound com- treating A method pressure of at least 0.11 atm at steps of: prising progressed wound until the wound had capable i. vacuum source providing stage healing. toward a selected providing at least 0.11 atm' reduced pressure; patent '651 col.25 ll.81-48. locating ii. a flexible adhesive cover Figure '651 discloses wound, paving cover said over *6 components apparatus: key claimed port; suction (“JMOL Order”). As depicted figure, the claimed Once the seal is in (1) apparatus place, includes: a vacuum end pump tubing is placed “[o]ne (2) (3) (30); (12); tubing through an the seal into foam open-celled and the *7 (4) other end is attached to vacuum (10); pump. foam screen and the wound an adhe- The (18). pump and, vacuum is turned 11.31-61; be- sive '651 patent seal col.6 tight wound, cause of the seal around the (“FIG. see also '081 col.2 11.30-35 edges the immediately of wound begin a of negative shows cross-sectional view a together.” move Id. pressure device a comprising open-cell screen, polymer a hose connecting flexible
the foam section to a suction pump, and a II. Prior Art polymer overlying flexible sheet the foam- present litigation, &S N asserted assembly provide hose the necessary prior art that generally falls into three seal.”). “[f]irst, To utilize the apparatus, (1) primary categories: Bagautdinov foam open cell is cut fit shape (2) references; reference; the Zamierowski placed the wound and inside the wound. (3) the Chariker-Jeter references. On placed Then the adhesive seal is over the appeal, is dispute there no that these ref- foam that is inside the wound.” Kinetic erences are all art. Concepts, Inc. v. Sky Grp., Blue Med. (W.D.Tex. 08-cv-102, No. slip op. at 2 Oct. Bagautdinov A. References 2010) (order granting defendant’s mo- tion judgment for as a matter of law of The Bagautdinov references consist of obviousness) (ECF 605) invalidity for No. two Bagautdinov. articles written Dr. I”) a using Scalpel-1 manner or la- (“Bagautdinov cepted The first reference (“J.A.”) ser, from polyurethane a made Appendix in 1986. Joint drain published for “a method vac- in For placed sorp- It discusses is the wound. 10001-03. foam secondary primary treatment, uum treatment first filled with acti- tion is The refer- J.A. purulent wounds.” powder. The is vated charcoal wound the method as follows: describes ence polyethylene film one of sealed with depending on ways, the localiza- several purulent of the surgical After treatment focus. purulent of the Vacuum as- tion hemostasis, poly- a drain wound and an through aspira- is conducted piration adapted shape and size urethane foam using pump. a tion tube constant suction (or in the cavi- on the surface placed is Thus, film polyethylene “clenches” surrounding skin is smeared ty). The strictly along edges, its the wound vaseline, antiseptic or inert sterile with contact the sorbent makes secure with a on an oil and covered with salve base porous The structure of the walls. of the Regardless film.... polyethylene drain allows removal exudate and hermetically a tube sealing, method of is only vacuumization wound through onto the foam hole installed cavity side. The session lasts 1-2 The polyethylene made beforehand. negative pressure hours with of 10-40 pump latter connected vacuum mmHg, re- after which isolation is through vessel. At vacu- a collection The drain is 1-2 changed moved. times mmHg film clenches um of 10 to daily. along Vacuum treatment was continued strictly the wound its skin bound- days. treatment of for 3-4 aries with uniform vacuum only cavity the walls on the side of method, 10026-27. As a result of this exudate because of and elimination of average, wound became clean “[o]n porous structure of the drain. The 4-5, granulated day appearance de- treatment sessions duration average The of inpa- tissue.... duration degree on the of vacuum and pends days, 11.8 tient treatment was bed com- hours, to 2 ranges from 30 minutes pared group; to 17.2 in the control 61.7% whereupon polyethylene removed patients were released with healed bandage emplaced. gauze require outpatient wounds and did not daily are conducted until the sessions treatment.” J.A. average proce- wound is clean. On *8 to days. dure takes 3 B. Reference Zamierowski Bagautdinov of this I notes that use Id. a The Zamierowski reference is Patent “inevitably acceleration obtainfs] method Cooperation Treaty Application filed on and healing periods rehabilitation J.A. 10057. The reference April 1990. The patients.” J.A. 10003. second system “fluidic ... describes a connection II”) (“Bagautdinov pub- was also reference liquids introducing from and draining for Bagautdi- in 1986. J.A. 10026-27. lished 10059. de- liquids patients.” J.A. As II a application describes of method nov reference, system, scribed I Bagautdinov in similar to described dressing, to a wound con- which amounts The patients. to 170 J.A. 10026. method of: sists that, employed requires including membrane semipermeable surgical [A]
[i]mmediately after treatment perimeter a pair panels having a each commonly ac- the infected area strip. edge and an The membrane is J.A. 10061-63. The reference indicates by connecting the panel edge formed dressing that this “promotes wound heal- to form a strips together seam extend- J.A. ing.” 10063.
ing transversely across the membrane. panels and the membrane include C. Chariker-Jeter References open- inner surfaces. A and outer tube The Chariker-Jeter references consist through ing the seam between extends (“Chariker-Jeter published of two articles panel edge strips and between the II,” I” and' respectively), “Chariker-Jeter inner and membrane outer surfaces. 10044-47; 10050-56, J.A. Dr. and inner The membrane surface coated public Chariker’s 1989 use of the system with an for adhesive attachment described in on Gary the articles Aderholt skin a A patient. tube sheath (“Chariker-Jeter use”). public Both Char- proximate extending includes a end I iker-Jeter and Chariker-Jeter II through tube a de- opening distal drainage scribe same positioned spaced end from “closed wound relation system.” outer A J.A. 10052. As pas- membrane surface.... described II, sage through drainage system the sheath be- Chariker-Jeter extend[s] by: tween its An can ends. inner conduit be created placed passage in the sheath and can Irrigat[ing] the wound bed thor- assembly include a seal connection oughly with using normal saline a 30ml forming fluid-tight a with seal syringe with 19-gauge a needle. sheath.... When fluidic connection gauze Moisten one 2X2 system square with dressing, is used as a wound an normal saline. layer Open completely lay intermediate can material be across the applied wound between the wound bed. cov- er membrane inner surface. Further- 3. Place Jackson-Pratt drain in wound more, system the fluidic connection bed. Shorten the fenestrated drain present invention can be used to necessary so that the flat drain is con- percutaneous drainage secure a tube fined to the wound bed. The drain is within patient, e.g. by inserting placed in never the fístula2 tract. In the percutanious through tube the sheath drainage level, case fístula at skin passage.... The cover membrane can portion fenestrated of the drain is sim- be releasably, adhesively fastened ply centered over the open- cutaneous skin a periphery around A thereof. It ing. may be helpful encircle the fluidieally tube communicates cutaneous pectin-based wound with a an through opening wound mem- barrier skin in order create draining brane. Fluids wound “trough” in which to situate the fenes- can through be evacuated tube trated drain. liquid irrigation medication and can be *9 through introduced 4. Saturate 4X4 gauze squares to tube with wound site. The Open fluid evacuation and normal saline. and fluff into steps introduction of completely the method can wound to cover the drain and each accomplished be actively both and fill the defect to skin level. In the case passively.... fistula, only of a enough cutaneous moist Inc., generally 2. A Sky "fistula” is to Grp., considered be a Blue Med. organ. (Fed.Cir.2009). hole Concepts, in an Kinetic Inc. v. umíate, causing damage drain skin and leak- to cover the flat fenestrated
gauze dressing. age outside Another required. not a you indication that have obtained (Bard sealant Barrier Apply 5. skin system whistling is a closed suction etc.) Film, to all skin that Skin-Prep, not indicating dressing sound that the dressing. film will be covered air-tight. dry to until slick. Allow (footnote added). J.A. 10052 Chariker- a dressing 6. film select size Cut the II explains that clinical obser- “[o]ur Jeter linch of intact skin allow at least that fistula effluent does suggest vations edges. Place the film beyond wound By minimizing healing____ wound inhibit dressing packed wound. Care- over inflammatory response [associated crimp dressing film fully the adhesive effluent], the presence fibroplasia with tube to around the Jackson-Pratt seal. believe, This, encourages is reduced. we a the tube exit site with “Caulk” re-epitheliali- contraction and rapid wound small amount of Stomahesive Paste zation.” J.A. 10055. dressing film is crimped
where the Finally, respect with to the Chariker- air-tight ensures around the tube. This use, public Dr. Chariker Jeter testified closure. he with treated Mr. Aderholt waterproof this with 8. Reinforce site drainage system. his closed suction wound tape” “pink as illustrated. injured log with a Aderholt] was “[Mr. truck his chain that flew off another into your 9. Turn attention now to the con- truck, chest, abdomen, rup- his entered his to continu- nection the Jackson-Pratt lung, [diaphragm], pan- his tured his his (Do attempt ous suction. not use creas, his spleen, his stomach.” system.) bulb the Jackson-Pratt pictures 22032:8-11. the aid of With some and tub- With brands canister treatment, Dr. Mr. Aderholt’s Chariker necessary all that is is to cut the ing, example stated that his treatment was an tubing funnel end off the small drainage system facilitating tubing snugly larger fit J-P will into healing of a on a patient wound without junction lumen The should be tube. fístula. J.A. 22035:6-38:11. securely Other- taped pink tape. you may use small “Christmas wise Litigation III. Prior tubing or cannibalize TV
tree” connector plastic adapter to connect get small Forest and sued Wake KCI tubing. (“Blue Sky Group, Blue Medical Turn continuous suction al., Sky”) alleging gauze et that its based setting (approxi- upper range of low therapy negative pressure products wound (“'643 80mmHg) mately 5,636,6433 observe infringed Patent No. U.S. dressing trial, should con- patent”) patent. wound site. At '081 not, noticeably. sys- infringed, If it does not patents tract found the were invalid, drainage tem is not closed and wound unenforceable. At trial, efficiently filed a motion for will not be removed. When close defendants law, occurs, alleging a matter of age judgment fistula drain will accu- *10 litigation. pres- has this ent KCI not asserted (W.D.Tex. 08-cv-102, 12, the claims of the at slip op. asserted '643 '081 Nov. 2009) order) (claim (ECF patents were invalid obvious under 35 construction No. 280) (“Claim Order’’); § Construction see 103. The district court U.S.C. denied also JMOL Order at 4. that motion. given Before the jury case appeal,
On
this court affirmed the
determination,
parties disagreed
the
about
invalidity
finding
was not established
jury
the form and
content
instruc-
and that
asserted claims were not in-
tions. Wake
had
Forest
KCI
demand-
fringed.
Sky,
Blue
F.3d
1025-26.
by jury.
ed a trial
In response, S N&
conclusion, however,
reaching
we
court
jury
moved
district
to strike the
determined that the district court commit-
law,
demand with
to
respect
questions of
ted harmless
to
failing
error
construe
including
question
the ultimate
of obvious-
the term “wound.” Id. at 1019. While we
ness. Def.’s Mot. to
Jury
Strike Pis.’
De-
provide
did not
a definitive construction of
Questions
5-9,
mand on
of Law at
Kinetic
“wound,” we
construing
concluded that
“
Inc.,
Concepts,
Sky
Inc. v.
Grp.,
Blue
Med.
‘pus
‘wound’to
pock-
include fistulae and
(W.D.Tex.
2010) (ECF
21,
08-cv-102
Jan.
ets’
expand
scope
would
[]
397) (“Motion
”).
No.
to Strike
Prior to
beyond
far
anything
claims
described in
ruling
merits
the motion to
specification.”
Id. Significantly, for
strike, the
court
district
conducted an on-
present appeal,
we also concluded that
pre-trial
the-record
hearing. During the
“wound,”
patents,
“as used in the asserted
S &
hearing,
N made clear that it wanted
does not cover the fistulae
described
jury
findings
respect
make
”
publications....
Chariker-Jeter
Id. at
the factors under Graham v. John Deere
Co.
City,
Kansas
383 U.S.
86 S.Ct.
(1966),
Id. at 16. Under this question hearing, district court & the ultimate the denied S N’s judge resolve would the it the request the basis of not submit ultimate of obviousness Ki jury. in their an- findings exemplified question as of obviousness to the factual Concepts, Sky Inc. v. Blue Med. interrogatories. netic the swers to Inc., Grp., 08-cv-102, slip at op. No. 4-5 the expressed and KCI Wake Forest (W.D.Tex. 2010) (order granting in Jan. “one of the proposal was belief that this mo- part denying part defendant’s it of all time” because would worst ideas plaintiffs jury demand on tion to strike complicated that the process make the so law) 407). (ECF It con- questions of No. thereby “taking jury get right, could jury cluded that instructions shall “[t]he jury power they have away from the the underlying explain the factual issues Id. at 28. been the constitution.” given legal as as jury must resolve well with S & N’s their concern Highlighting determining standard obviousness. form, Forest and proposed verdict Wake Additionally, jury form shall verdict pages, that: “It’s not two explained KCI jury ask specifically to determine the actually pages questions. five Two but factors, underlying Graham and make a ques- that look like this of detailed pages final determination of that the obviousness prior art discloses tions whether the about Id. at advisory.” will as court consider patent, and two teeny tiny aspects for a narrative answer that call questions ruling, par- In accordance with this Id. jury.” Responding from the at joint began developing proposed jury ties criticism, judge trial indicated that this special and a verdict form. At instructions juries ... “very give reluctant he was evidence, presentation the close of the narrative answers.” questions requiring the in- parties developing were still Id. at 27. Jury verdict form. Tri- structions Concepts, Kinetic Tr. Day al at parties’ summarized the judge The trial Sky Grp., Inc. v. Blue Med. No. 08- essentially arguments saying both (W.D.Tex. 2010) (“Day Feb. cv-102 present how I thing: same matter “[N]o ”). Transcript Trial jury in- Because the separate I to make a jury this to the have com- and verdict form were not structions Even if I determination as to obviousness. plete disagreement and there was some in a this broad were to submit should over exact form documents just is it obvious—re- form submission— take, charge con- the district court held said, my analysis gardless of what the remaining any disputes, ference to resolve my require that I do own would have to the instructions and the ver- and finalize legal point look at the matter from view____” stage proceeding, At dict form. Id. at 30. The trial judge con- proffered by form the obviousness verdict of the Motion to cluded discussion eighteen pages length, & N S indicating he Strike that would read slightly more Forest and KCI’s was Wake presented by parties materials Id. 2969- pages length. than at seven He using special interrogatories. consider verdict proposed 70. Each of the forms cautioned, however, that, open “while I’m addressing the specific questions I’m contained interrogatory presentation, a special differences, if the asserted any, between interrogatory presen- a special open categories art on and on and on.” Id. claims and three goes tation that pro- reviewing above. After discussed 30-31. *12 stated, judge posáis, the “I really ent, can’t so there is no record the discussion. give them this.... may I try have to to It is clear from looking at jury the instruc figure out something them, else to give but tions and the verdict form presented this won’t work.” Id. at 2985. jury, however, that parties and the judge agreed to use a different format explained The judge that, his belief if than suggested by the judge at the close of the verdict form only posed the ultimate charge conference. Although jury question jury, the court would be instructions contain a discussion of the guidance left with little regarding the fac- parties’ contentions regarding the differ predicate tual resolution of ences between claims, art and the that issue. Id. at 2990-91. The district Jury Trial Tr. court, Day 11 therefore, 3098-3102, at expressed Kinet preference its Concepts, ic jury ask the Inc. v. specific Sky Blue questions Med. Grp., about the (W.D.Tex. No. factors, various Graham 08-cv-102 addition to Feb. ask- 2010) ing the jury (“Day its view on ”), Trial Transcript ultimate con- clusion of obviousness. form Id. verdict did not 2992-94. jury allow the provide a narrative about which differ- After discussing the various options with they ences exist, found nor did pose it parties, the judge decided that the best questions regarding all of the Graham fac- option was to allow the parties to draft a tors. J.A. Instead, 65-89. in questions 300-word description of what the parties 5(A)-(C), the jury was asked whether sev- asserted were differences between the eral enumerated differences between three main categories art and each prior art and the asserted claims were the of the asserted claims. These “jury con- only differences that existed. jury The tentions” would be included in the jury simply was instructed to yes answer or no. instructions. Then jury verdict form addition, in question 5(D), the would ask verdict differences, what if any, the jury form contained a chart found that between the allowed the given claim and the jury to indicate three main whether categories they prior art, found certain provid- objective ing space indicia of jury for the to list nonobviousness the differ- to be present ences in a with narrative. respect Id. at to each of 2997-3006. the assert- ed claims. J.A. 70. Finally, question 6, With guidelines, these the judge dis- the verdict form asked to decide parties missed the to finish drafting the S whether & N proven had that the assert- jury instructions and form, verdict explain- ed claims were obvious. J.A. 71. ing that they would meet that evening when the instructions and verdict form determined that the claims and were complete. Id. at 3003-04. The the prior art exhibited differences addi- judge parties, advised the however, that “if tion to listed, those 64-69, J.A. that most you’ve got any better idea on obviousness of objective considerations favoring you agree to, can I’ll be glad it, to do nonobviousness present were with respect you’ve but what come up with so far we’re claim, to each that infringement prov- going so, do. And you if can’t come en, and that obviousness was not estab- with up anything, you just then have to do lished. 62-63; 71. After the verdict way said, I which I think is not was read to parties, the district court Id. at optimal.” indicated that parties should prepare
When parties met night post-trial motions if they wished to chal- the judge, a court reporter was pres- lenge the jury’s verdict. Jury Verdict Tr. *13 findings support of implicit factual the Inc. v. Blue 12-13, Concepts, Kinetic Inc., advisory verdict on nonobviousness to No. 08-cv-102 Grp., Sky Med. Instead, 2010) court defer. S 10, which the should (W-D.Tex. (“Jury Verdict Mar. “as the ultimate deci- ”). N asserted that & Transcript obviousness, th[e] on [district] sion-maker 50(b) of the Federal to Rule Pursuant to make responsibility has the its [c]ourt Procedure, for S & N moved Civil Rules of upon the current rec- findings, own based of the asserted JMOL, that all arguing ord, legal necessary support to its own patents '651 were claims of the '081 and regarding obviousness.” Def.’s conclusion motion, S & N asserted In its obvious. Reply Supp. of its Renewed Mot. J. support did evidence not that substantial Invalidity of Law of for Obvi- as a Matter (1) findings that addi- jury’s explicit 1, for New Trial at Ki- ousness and Mot. art prior tional differences between v. Concepts, Sky Inc. Blue Med. netic (2) existed, and the asserted claims and (W.D.Tex. Inc., May No. Grp., 08-ev-102 of nonobvi- multiple objective indicia that 548). 2010) (ECF 12, upon Based No. this present. ousness were jury’s understanding of how the verdict court, by district should be reviewed S motion, to S & N’s Wake Responding argued that claims & N the asserted were that, in to argued addition Forest and KCI a matter of law. obvious as findings, jury’s implic- the explicit necessary the ulti- findings it to determine ruling Prior to on merits of S & N’s should be question mate of obviousness motion, hearing. court conducted a S to found presumed have been Wake that, by began arguing & N because the Furthermore, and KCI’s favor. Forest question on jury’s verdict the ultimate implicit, findings, explicit and these both advisory, inappropri- was it is obviousness by be the trial court should not disturbed “just every finding to fact in ate assume they supported by not substan- unless are jury’s of’ the nonobviousness verdict. favor standard, light tial evidence. 133, Hr’g Tr. at Kinetic Con- Post-Trial that sub- Forest and KCI asserted Wake Sky Grp., v. Blue Med. No. cepts, Inc. jury’s fac- supported evidence stantial (W.D.Tex. 2010) May 08-cv-102 (1) that additional dif- tual determinations: (“Postr-Trial Transcript”). In- Hearing art between the and ferences existed deed, argued findings implied S N that & (2) claims; objective that indi- the asserted to only respect questions of fact arose with were present; cia of nonobviousness 5(A)-(C), differences, regarding additional (3) teaching away was demonstrated that 5(D), objec- regarding existence and Char- respect Bagautdinov to indicia of Id. at 133- tive nonobviousness. On the basis of references. iker-Jeter simply enough say 36. “It is findings, Forest and KCI as- these Wake obviousness, implied every find- jury found motion be that S & N’s should serted favor, in our which is what KCI ing fact it that because failed establish denied arguing, and therefore the verdict as a mat- claims were obvious asserted upheld. They Not true. are should be ter law. findings only implied entitled KCI, they encompassed are the Ver- S & extent Replying Wake Forest & Question not 6.” Id. at 136. S N jury’s verdict of dict highlighted N that did advisory only. argued Ac- that substantial evidence nonobviousness finding that ad- support no factual argued it there were cordingly, patentably significant objective differences ditional also found that several art and the as- existed between indicia of present nonobviousness were did objective serted claims and indicia not alter the district court’s conclusion be- present. were nonobviousness cause, said, “the Court not convinced they overcome strong case of obvi- KCI, Forest the other Wake ousness teaching established hand, *14 argued jury’s that verdict on the Accordingly, art.” at 35. .Id. of question always ultimate obviousness is granted court S & N’s motion and entered because, law, advisory question as a of judgment its in favor. Id. at 37. by be determined the court. must See id. Nonetheless, at 153. “the case is ab- law timely Wake Forest appealed.4 We solutely that ... jury clear [w]hen the jurisdiction have pursuant to 28 U.S.C. obvious, you that are not [the claims] finds 1295(a)(1). § that they right have to assume find the facts, underlying then test is sub- Discussion underlying stantial evidence” factu- al at findings. Id. 155. Under stan- this We review a district court’s dard, argued Wake Forest and KCI novo, grant of applying JMOL de the law supported jury’s substantial evidence circuit, regional the Fifth Circuit explicit implicit factual findings, and in this Corp. case. Harris v. Ericsson that S & motion N’s should have been 1241, (Fed.Cir.2005). 417 F.3d 1248 denied. Circuit, In the Fifth bemay grant JMOL only ed court if trial “the facts and Ultimately, the district court indicated point inferences so strongly and over jury’s that it would “review[ ] conclu- whelmingly in favor of one party that the obviousness, law, question sions on Court believes that reasonable men could deference, without and the underlying a contrary not arrive at verdict.... On the fact, findings explicit whether implicit hand, other if there is substantial evidence verdict, within the for substantial evi- ' opposed [grant to the ... JMOL] [it] dence.” Order at 8. JMOL After thor- should be denied.” v. Broussard State oughly summarizing art, relevant Co., Farm Fire & Cas. 523 624 F.3d that, contrary district court concluded Cir.2008) (5th (quoting Bryan Brown v. explicit findings, “the differ- (5th Cnty., Cir.2000)). ences between the claimed invention and evaluating When the district grant court’s art, any, the prior if are minimal.” Id. at JMOL, given consideration is to “all of Indeed, the district court concluded evidence, drawing all reasonable infer the differences were so minor that ences and resolving all credibility determi “such minimal variations would been have in light nations most apparent favorable having ordinary one skill non-moving party.” Brown, Id. (quoting the art----” Id. 34. The court conclud- 456). ed, 219 F.3d at therefore, Because is a that “the evidence clear obviousness is question fact, mixed convincing that law and legally there no first “[w]e presume sufficient the jury basis on the record to conclude resolved the under that all patents lying asserted claims of the factual disputes in favor of the ver suit were not obvious.” Id. The fact that presumed dict and leave [ ] those findings not, therefore, appeal did judgment KCI and is appellant an before this court. sometimes used to refer to The term is supported by if are sub- they undisturbed 39(c)(1) 39(c)(1) juries. Then we examine Rule Fed.R.Civ.P. evidence. stantial (“In obviousness] legal conclusion of right [of an action not triable [ultimate] in light it is correct to see whether court, de novo on or on its own: jury, motion findings.” fact Jur presumed try may any advisory issue with an (Fed. 1552, 1557 McKasy, F.2d v. gens 39(c)(1), jury....”). Rule when an Under (internal omitted); Cir.1991) citations see used, findings— “advisory jury” no Scimed, v. Inc. Cordis also Bos. Scientific binding explicit or on implicit either —are (Fed.Cir.2009) F.3d Corp., 554 obligated court is the trial court that, (“When light aof we consider even findings of and con- independent make fact fact, the references dem jury’s findings presented clusions law the issue obvious, to have been an invention onstrate N jury. *15 the S & first claims that the obviousness determina may reverse its we the to court submitted matter district Richardson-Vicks, Inc. v. (citing tion.” 39(c)(1) jury under Rule and that accord- (Fed.Cir. Co., 1476, 122 1479 F.3d Upjohn court nor we ingly, neither trial are 1997))). by jury’s findings. factual We bound disagree. what amounts to well In the face of that, law, argues because S & N settled that the We do believe district in this was “adviso jury’s verdict case 39(c)(1) to court intended invoke Rule findings within the
ry,” implied “no factual “advisory jury.” it referred to an when binding....” Appel verdict are advisory 39(c)(1) First, advisory jury is avail Rule asserts, therefore, N& lee’s Br. at 39. S only by right in an action not able triable only jury’s ex that we should review But, jury. infringement to a Id. findings respect ques to factual plicit jury if demand actions must be tried to 5(A)-(D) substantial evidence. tions for aby party. Markman v. Westview ed jury’s advisory verdict on the Because Instruments, Inc., 370, 377, 517 U.S. 116 gave rise question ultimate of obviousness (1996). 1384, 577 Sec & con S.Ct. 134 L.Ed.2d implied findings, to no factual S N to ond, free make tends the district court was & did ask and the district S N respect all findings of fact with to its own findings special did not make court jury. to not submitted Id. issues in 52 all actions tried “with requires Rule N, we According to S & should 39-40. (“[T]he advisory jury.” Fed.R.Civ.P. 52 an for er findings review these factual clear specially find facts court must argues N that the dis Finally, ror. S & separately.”); its conclusions of law state regarding trict ultimate conclusion court’s Transmatic, Indus., also Inc. v. Gulton see be de novo obviousness should reviewed (Fed.Cir.1995) 1270, 1275 F.3d find to be findings of the factual we light (“When, here, trial is held before the as disagree. by the evidence. We supported jury, advisory court with an district specially just must find facts court Although S N is correct & trial with conducting when a bench would repeatedly court referred district advisory jury.” (citing In re an Inci out “advisory,” S N is jury in this case as & King, 758 dent Aboard the Ocean D/B use wrong implications about (5th Cir.1985))). And, 1063, F.2d ways first term carries. We address filing to have the than a motion rather jury” phrase “advisory is used which the 52(b), Rule amended under judgment by trial courts. 1973). jury’s to actions tried before a on applies which Whether the verdict obvi- 39(c)(1) advisory jury, implied S & N filed a ousness gave Rule rise to factual find- governs not, therefore, which pursuant ings motion Rule is controlled these as a matter of law a “judgment cases. & Finally, Fed.R.Civ.P. 50. N
trial.”5
S
court,
we,
“advisory
term
jury”
can also
that the district
concedes
explicit
the jury’s
defer to
factual
be used to denote a
resolution of a
must
legal
is
findings, a concession that
inconsistent
issue that the court can permissibly
39(c)(1).
decide,
It
give
with its reliance
Rule
but whose ulti
clear, therefore, that the court did not use mate determination is
for
reserved
“advisory jury”
to denote a Rule
term
e.g., Spectralytics,
court. See
Inc. v. Cor
39(c)(1)jury.6
Corp.,
dis
649 F.3d
1341-42
(Fed.Cir.2011);Dynamics,
R.R.
Inc. v. A. Stucki
all
consequence,
As
cases cited
Co.,
(Fed.Cir.1984).
proposition
& N
S
that there
explained:
As we have
findings implied
are “no factual
within the
dangerous
[I]t
neither error nor
advisory
binding
verdict
are
on the
[that]
justice
legal
juries,
to submit
issues
district court” are irrelevant
all of
because
*16
being
submission
accompanied by
the cases
actions that are not
involved
appropriate
instructions
on
law
by
jury
right
triable to a
and all addressed
39(c)(1)
judge.
the trial
The
relating
rules
advisory juries. E.g.,
Rule
Am.
Calcar,
interrogatories,
instructions,
to
Co.,
jury
mo-
Inc. v. Am.
Motor
651
Honda
(Fed.Cir.2011)
verdict, JNOV,
1318,
tions for directed
and
(“Inequita-
F.3d
1333
trial,
nature,
new
equitable
governing ap-
ble conduct is
in
the rules
with no
trials,
right
peals following
to a jury,
jury
fully
and the trial court has the
are
ade-
quate
obligation
provide
interposition
to resolve the
to
for
underlying facts
(citation
of materiality
judge
guardian
and intent.”
omit-
as
the law at the
Prods.,
ted));
Inc.
proper
Sheila’s Shine
v. Sheila
point
necessary.
and when
Inc.,
(5th
Shine,
114, 122
486 F.2d
Cir.
question
There is no
that
judge
must
During
argument,
argued
oral
S & N
that
cannot be assumed under circumstances
this court’s
in Goodwall
decision
Construction
party continually requests
jury
which a
a
trial
Co.,
Co. v. Beers Construction
verdict. employing special a court Fed.R.Civ.P. with presented question again when to only require form can verdict trial. In no or new motion for JNOV a findings as to “each issue of return such abdicate judge sense need 49(a)(1). ulti fact.” Rule Because the role. guardianship legal is conclusion of obviousness a mate at 1515. This Dynamics, 727 F.2d R.R. question, strength argu there in which the the manner be appears by including question that on its ment “advisory used the term court district court chose to employ verdict form the Transcript Pre-Trial jury.” Conference general verdict with answers written (“[N]o present I this matter how at 16-22 49(b). governed by Rule It is questions separate have to make I findings support clear that factual obviousness.”). This toas determination implied when a general verdict are verdict fact is buttressed conclusion 49(b) Quak See form under Rule used. Management Judicial Patent Case Works, Corp., Inc. City er Gear v. Skil explained it Guide, court which the district (Fed.Cir.1984) (explaining F.2d issue, sug- respect reviewed 49(a) form in when a Rule verdict “advisory jury.” of the term this use gests legal question, “since the answer cludes *17 al., Man- et Patent Case S. Menell Peter legal necessarily question to the resolves (2009) 8-32 Guide agement Judicial issues, disputed underlying factual we any (“[T]he only the can submit relevant court to the factual find have undertaken review its jury to the for determi- factors Graham based, legal ings on which the conclusion special interrogatories, through nation substantial evidence stan applying the advisory an verdict on or without with (citation omitted)). Furthermore, dard.” obviousness, and then legal question of that, it is not error have indicated while we obvi- question ultimate determine the jury to the legal questions submit to jury’s on the factual itself based ousness 49(a) form, special verdict part of a Rule determinations.”). legal question the answer “since any underly necessarily disputed resolves understanding of district With this issues,” accept must factual court “advisory jury,” ing term we use of the court’s findings upon which remaining argument implicit factual & N’s now address S are they is based when legal review. S & N conclusion standard of regarding the evidence. Id. supported by a substantial the district court utilized asserts that Co., 49(a) Sears, Roebuck & (citing verdict Connell v. interrogatory special Rule (Fed.Cir.1983)); 1542, contention, see N 722 F.2d 1550 S & Based on form. Recycled Inc. Prods. Techs. v. implied are no factual also Gaia that there asserts (5th Cir.1999) 365, Corp., 175 371 is due because F.3d findings to which deference 49(a) (“Rule permit district jury on does right its to a trial party waives contrary jury findings court to make party which the did factual issues for verdict.”). essence, the district “factu- because interrogatory special demand 1360 invention, question the ultimate achieve the claimed included ob-
court form, special verdict all of skilled artisan would have had a reason viousness on ” underlying the expectation doing factual determinations able of success in so.’ implicitly put were question ultimate Procter & v. Pharm. Gamble Co. Teva not, (Fed.Cir. USA, Inc., 989, for Forest did jury resolution. Wake 566 F.3d 994 therefore, any 2009) trial Inc., waive a factual Pfizer, (quoting Apotex, Inc. v. in an 1348, (Fed.Cir.2007)). not submitted to inter- issue 480 F.3d and the district court was re- rogatory, analysis sugges- an any teaching, While accept implicit findings all factual quired tion, or motivation to combine elements jury’s with conclusion re- supporting prior from different art references is use- to the ultimate conclusion obvious- spect an analysis, ful in the overall obviousness supported by substantial ness that were inquiry expansive must be and flexible. evidence. Inc., v. Teleflex, KSR Int’l Co. 550 U.S. 398, 415, 419, 127 S.Ct. 167 L.Ed.2d we all of the Accordingly, review (2007). implicit findings explicit and factual We examine substantial evidence. then This explained, court has legal conclusion of de obviousness novo moreover, inquiry that the obviousness re it is in light to determine whether correct quires examination of all four Graham fac findings of the factual find we ade- Watson, E.g., tors. Mintz v. &Dietz Jurgens, quately supported. F.2d at (Fed.Cir.2012). 679 F.3d In deed, must courts consider all of the Gra reaching
ham factors
a conclusion
I.
respect
Cyclo
to obviousness.
In re
benzaprine Hydrochloride Extended-Re
and,
obvious,
A
there
Capsule
Litig.,
lease
Patent
fore, invalid “if the
between the
differences
(Fed.Cir.2012)
cases).
1076-77
(collecting
subject
sought
patented
matter
to be
times,
At all
the burden is on the defen-
subject
art are such that
*18
dant
establish
convincing
clear and
matter as a whole would have
obvious
been
patent
evidence that the
Id.
obvious.
at
at the time the invention was made to a
1077-78.
person
ordinary skill in the art
having
subject
pertains.”
which said
matter
Because Wake Forest
asserts
the
103(a).
§
ques
U.S.C.
is a
Obviousness
court
by granting judgment
district
erred
of
underlying
tion
law based on
factual
as a matter
law overturning
of
the
(1)
findings:
the
and
of
scope
content
the
verdict, we must determine which of the
(2)
art;
prior
the differences between the
jury’s explicit
implicit
and
findings
factual
art;
(3)
prior
claims and the
the level of
respect
with
the
Graham factors are
(4)
art;
ordinary
objective
skill
the
and
supported by substantial evidence. Each
Graham,
of
indicia
nonobviousness.
383 of
the Graham factors is addressed
turn
17-18,
party
obviousness must “demonstrate clear Scope A. Content of the Prior Art convincing evidence that a skilled arti san would on parties agree have been motivated to combine The which refer of teachings prior appeal, the the art references to ences are art. S & N On the experts contended that refer- on Ba- & N’s analysis the its obviousness focuses references, the treatment of wounds refer- ences disclosed Zamierowski gautdinov meaning references. the asserted claims. ence, within and the Chariker-Jeter references, par- (testimony of to these 22345:13-17 Dr. respect See J.A. With content,7 namely, wheth- Gordon, dispute expert, stating their & that Ba- ties S N’s the treatment art discloses negative er I gautdinov disclosed use This negative pressure. wound). with addition, wounds In pressure to treat a all of because appeal the central issue displayed the method dis- Bagautdinov Dr. claims, covering either the asserted jurors references to with closed require the use or apparatus, method of a manikin. J.A. 22204-05. the aid a “treat to either negative pressure conflicting testi- presented Forest Wake healing “facilitate wound” or expert It mony, proffered testi- however. district court concluded The wound.”8 wounds described mony purulent that the support proposi- no for there was are in Bagautdinov references fact references did primary that these tion pus pockets or not within the dis- abscess utilizing wounds treatment of disclose the court’s construction of term trict Order at JMOL negative pressure. (“Dr. below, Bagaut- J.A. 22871:19-21 27-28, this was “wound.” explained 33. As variant, modification of supports using dinov is a or evidence substantial error: out, finding that none of technique, aspirate, pus factual a to suck jury’s implied wound, the treatment of disclosed a purulent pus these references a which is negative pressure. using pocket.”); (discussing wounds 21431:15-23 Bagautdinov pus pockets by treated
how with lancing draining and then them Bagautdinov Content method). addition, disclosed Wake References Bagautdi- expert testified that Forest’s references disclose Bagautdinov use of the references indicate that nov draining purulent fluid from device purulent when the device is discontinued placement The device involves wounds. infection, has been cleaned wound purulent foam in the polyurethane and appara- method patented whereas wound, to a attaching pump, foam only after a wound has tus are utilized wound covering apparatus infection. cleaned of J.A. 22878:7- been film secured polyethylene conceded, expert & N’s more- 80:16. S oil. J.A. skin with vaseline over, Bagautdinov articles were *19 prob- “particularly concerned about conflicting presented with jury was pressure putting negative lems related whether references regarding evidence surrounding of the wound on the area skin by as the dis- construed treated wounds infection, causing did, spreading and the risk of they court, if whether they and trict In damage....” J.A. 22343:5-8. pressure. S tissue negative with treated wounds par- While the district court indicated in 8. While district court stated that 7. of did contest the content it was the claims ties Order that not sure JMOL art, Or- limitation, below, incorrect. JMOL this statement was explained contained this art disclosed the der at Whether 7. p. they 1363. do. See infra negative pressure with treatment of wounds parties, id. dispute see key was a between 21, district court resolved the issue and the 25, 27-28, 33. order. Id. at in its JMOL words, (2) Bagautdinov references in patents; other “wounds” as described explain negative pressure of on pressure that use or use of negative to treat wounds. dangerous a wound is surrounding There is also substantial to sup- evidence patient. teaching away. This amounts finding port the that the references teach Quanta Computer Ricoh Co. v. 550 away negative from maintaining pressure (Fed.Cir.2008) (quoting F.3d In periods on wound for extended time (Fed.Cir.2006) Kahn, 441 F.3d re perceived problems because of the associ- (“A may away be to teach reference said doing ated with so. skill, ordinary person upon
when a read- reference, be ing discouraged would Content the Zamierowski following the set path from out Reference reference, led in or would be a direction The parties agree divergent that the Zamierowski path from the was taken reference’s method applicant.”)). is utilized on “wounds” construction, within the district court’s and Finally, presented Forest Wake testimo- placing discloses a screen means into a ny that the method disclosed the Ba- wound, sealing the wound placing a gautdinov references could not create an membrane an coating adhesive over seal, adequate 21437:25-38:2; J.A. J.A. wound, and connecting a tube 21433:2-15, and did not treat wounds under the membrane to a vacuum source. through pressure negative because the system J.A. This can then be used to pressure long was sustained for a inject either drain from or fluid into the enough period of time. J.A. 21433:18- wound. J.A. argues, 10063. & NS 34:11; Indeed, J.A. 21437:19-38:2. Dr. found, the district court that the Zamier- Bagautdinov admitted that he only used owski reference also disclosed treating wounds,” his device treat “infected negative pressure. wounds with JMOL 22312:15-22, he “never considered Order at 27-28. using technique [his] to treat wounds until closure.” J.A. 22310:17-21. trial, During Wake Forest argued that this reference does healing not disclose conflicting expert Because this negative wounds with pressure because testimony, was free to “make neither capable disclosed seal main- credibility determinations believe the taining wound, negative pressure on a nor trustworthy.” witness it considers more treating disclosed the wound towards a Hunter, (5th Streber v. selected stage healing as required by Cir.2000) omitted). (quotations light the asserted method claims. determination that S & N failed The district court obviousness, concluded that Wake prove we must infer argument Forest’s first incorrect be- experts found Wake Forest’s cause it found that persuasive be credible point. claims do *20 Broussard, 624; require healing not Jurgens, accomplished by 523 F.3d at to be negative at pressure. F.2d their Crediting testimony Id. at 27. In the alter- native, expert, over that of S & N’s there is the district court concluded that the substantial evidence supporting the factual Zamierowski require- reference met this finding that Bagautdinov the references do ment because fluid is removed the (1) not disclose: the treatment of negative pressure wound with and removal configured to create and maintain “healing” so was device healing, fluid enabled of ... negative pressure on a wound site for negative by pressure.” the “accomplished administering purpose negative of a the 27-28. Id. wound.”). Fi- pressure treatment nally, argued court was incorrect & N before the The district S never the to that district court that the asserted claims did respect its determination with In require light this limitation. of our not re not patents do claims of asserted prior holding Sky, of language Blue negative to be healed quire wounds patentee’s specification, and the state- First, appeal, Blue Sky in the pressure. reexamination, made find during ments we that all of the claims of we concluded requires that each of asserted claims present litiga patent asserted '081 negative pressure the use of to heal or negative require pressure the use tion treat wounds. at 1015 a “wound.” 554 F.3d to treat (“[E]ach of the claims in both asserted respect With to the district court’s ‘re requires using patents and '643 '081 holding, prior whether the art alternative a ‘negative’ pressure to ‘treat or duced’ of a particular discloses limitations a healing or ‘facilitate
wound’ fact to be question claim is a determined wound....’”). Thus, already we have jury, presented and Wake Forest limita the claims to include this construed ample evidence that the Zamierowski ref binding legal and that conclusion tion nega erence does disclose use of binding and is on the district court heal pressure tive wounds. J.A. the '081 specifications both panel. 21453:19-25; 22667:24-70:10; J.A. J.A. our patents support conclusion and '651 22866:19-68:12. E.g., Sky, patent '081 Blue moreover. (“The in present invention col.2 11.45-49 argument support of its that negative applying pressure ... a cludes does not a Zamierowski reference disclose promote over an area sufficient to a wound maintaining negative capable pres- seal migration epithelial subcutaneous sure, testimony presented Wake Forest wound, negative toward the tissue a that the reference does not create seal being for time suffi maintained a pressure meaning because within wound.”); to facilitate closure of the cient air only tight liquid a seal that has it uses (“[A] wound patent col.2 11.61-64 '651 21472:19-73:11;.J.A. 22668:25- gaps. J.A. treat apparatus provided is for treatment testimony This is consistent with 69:4. by applying pressure a wound reduced ing reference, which indicates the dress- wound....”). And, before ... semipermea- is ing material “breathable PTO, distinguished their patentees “relatively liquid- and the seal ble” by asserting art claims from the 10068; J.A. J.A. 10070. re- tight.” With ‘an suggest “do not disclose references “healing” to the contention that spect administering for reduced appliance a accomplished contemplated by the wound’; appa ‘an treatment to pressure expert Wake Forest’s testified patents, treating wound’ with the Zamierowski reference failed ratus/method (’651 pressure.” pat negative pressure J.A. 5501 un- maintaining reduced disclose (’651 ent); patent); progressed also J.A. the wound has a selected see J.A. til (Unlike art, 22456:24-58:1; (’081 healing. J.A. patent) stage Zamierowski, instead, to a uses claimed is directed 22669:5-8. invention “[the] *21 wounds, tubing system to medicate and drain ment of such whether dis- wounds, thereby “promote[ healing” negative ] and closed pressure device used 10061-63; 10074; J.A. generally, J.A. treat the wounds. With the exception use and use, does not disclose the maintenance public the Chariker-Jeter the two on a negative pressure wound site to publications Chariker-Jeter indisputably thereby facilitate and pro- wound closure only deal with the treatment of “[p]atients healing, patents. mote as do the wound draining wounds fistulae.” J.A. And, system specified in the unlike 10050. patents, system Zamierowski’s is to be re- In Blue we Sky, held that term process moved once the medication and wound, patents in these used “does completed. draining has been J.A. 10073. cover the fistulae described the [Charik Indeed, the inventor the Zamierowski publications----” er-Jeter] F.3d device testified that the inventors of the Despite our conclusion in that the patents '651 and invented the '081 use of juries treated in the publi Chariker-Jeter negative wound pressure therapy for cations are not within “wounds” the mean 22571:13-17; that he had not. J.A. see ing of patents, presented these S & N (Zamierowski also J.A. 22571:10-12 inven- testimony attempting establish tor indicating that his contribution to the references disclosed such treatment. J.A. commercial embodiment the asserted 22348:1-49:12; J.A. 22028:7-30:6. Regard
patents primarily the methods of attach- ing use, public Chariker-Jeter which ing rigid the “the conduit to flimsy was not Sky, addressed Blue NS & film”). proffered testimony of Dr. Chariker
Because the concluded that S & N who, resident, while a he was helped treat failed to the patents establish that were Mr. Aderholt system with the disclosed obvious, we must assume the jury publications. the Chariker-Jeter In this expert found Wake Forest’s be credible testimony, Dr. Chariker testified that he persuasive point. on this In light of used system to heal Mr. Aderholt with this assumption, there substantial evi- negative pressure. J.A. 22032:2-38:11. dence support the factual finding that Wake presented Forest testimony to the Zamierowski reference does not dis- contradict S & N’s evidence. expert Its close a sealing capable means of maintain- patients testified that all mentioned ing negative pressure, or maintenance of publications Chariker-Jeter had fis- pressure until the progressed wound has tulae, therefore, publications stage toward selected of healing. do not disclose the treatment of wounds within the district court’s construction. Content of Chariker- 21441:1-7; fact, J.A. J.A. 22672:11-23. In Jeter References on cross examination Dr. Chariker admit- ted references, that neither of the Chariker-Jeter as ex- Chariker-Jeter plained above, publications system involving disclose discloses wounds not treat- ing complicated a fistula. wounds that are J.A. 22045:15-25. fistu- Wake Forest’s la. moreover, J.A. parties experts testified, 10043. The dispute that the device whether these references disclose disclosed in the Chariker-Jeter references treatment of a wound within meaning pressure did not use negative to treat patents, and if it does 22671:12-91:24; disclose treat- wounds. J.A. *22 words, And, 2900:14-02:14. In other his 21439:1-41:22; J.A. J.A. 22869:13-70:21. negative pres- was not healed with wound that expert testified Forest’s Wake sure. J.A. 2712:13-14:19. actually publications Chariker-Jeter which is di- granulization, limit taught to Finally, experts Forest’s testified Wake to of the '651 contrary purpose rectly drainage system disclosed that use of the (“So 21441:12-19 patents. '081 J.A. and publications dis- in the Chariker-Jeter was document, they their seem according to fistula sub- continued when the closed or granulation tissue forma- to limit want stopped, from the drainage stantial fistula (“[Drs. tion.”); Chariker 22673:11-12 J.A. any state of wound irrespective of the actually gran- to inhibit wanted Jeter] 22869:20-70:12; J.A. healing. J.A. tissue.”). ulation 21438:13-39:18; 22672:24-74:4; J.A. J.A. (“In case, every every single 22870:3-5 conceded Dr. Chariker Significantly, they show single that in the book case anything neg- about publish he “didn’t that article, minute the chapter therapy regarding pressure wound ative draining, they got rid of stopped fistula or J.A. 22046:8-9. fistulas nonfistulas.” device.”). their Dr. Chariker conceded Dr. on cross ex- Similarly, Jeter admitted fact J.A. on cross examination. suggested using that she never amination This, again, reasonably could 22062:17-20. nothing was device if there the disclosed away teaching be deemed a from continued drain. J.A. 22147:8-11. device, long-term of the as directed use patents. the '081 and '651 pub- Chariker-Jeter respect With use, testimony offered lic Wake Forest procedural Again, posture because of involved fistu- Mr. Aderholt’s wound that case, of this we must assume that the la, not a within mean- so it was wound experts Forest’s found Wake credible 22696:4-13; patents. J.A. J.A. ing of than this testi- persuasive. Rather credit 22698:22-99:5; 22898:22-99:8. On J.A. however, imper- mony, the district court moreover, examination, Dr. Chariker cross missibly re-weighed credibility, witness say Mr. Aderholt did not refused to concluding expert’s that Wake Forest’s fistula; only he stated one was have testimony a fistula that Mr. Aderholt had 22057:23; diagnosed. J.A. J.A. never unsupported by the evi- “completely was 22058:4; addition, J.A. 22085:2-6. This was dence.” JMOL Order that, testified based expert Forest’s Wake Sky, error. Blue F.3d at See operative reading Mr. Aderholt’s on his testimony, On the basis of this credited treatment, pictures his *23 (4) by using negative pressure; differences, the eral which S & N
healing conceded did public use not involve addition, Chariker-Jeter jury existed. J.A. the 65-69. the disclosed in Chariker-Jeter the device stated that of the art each references (5) public the did not publications; and use exhibited additional differences those maintaining nega- a capable seal involve form, explicitly mentioned on the verdict Finally, with respect tive pressure. and, although they thus, were asked to claims, sup- method substantial evidence not identify did those additional differ- negative ports finding pressure the ences. pro- until maintained the wound was not Although many there are differences be- gressed stage healing. toward a selected the primary prior tween art references Ordinary in Art B. Level of Skill the claims, purpose asserted for the parties Although stipu did not appeal, only we need focus on three. art, ordinary level of skill in late the S above, discussed As substantial evidence expert & testified that the level of N’s supports finding that none of the refer- ordinary skill in art “would include treating ences discloses with nega- wounds professionals, example phy health care pressure required by patents. tive as nurses, podia or it could sicians but be a do Bagautdinov Nor and Chariker- else, somebody trist who has or additional Jeter references relate to the treatment of or about training knowledge wound care. wounds in patents, described as con- engineers It also be with experience could Sky strued this court Blue and the or operating designing equipment used in Finally, Bagautdi- district court here. conjunction with wound care.” J.A. nov references and the Zamierowski refer- According to 22340:8-13. the district do capable ence not disclose a seal court, Forest Wake asserted that the level maintaining negative pressure. Accord- higher. was skill 393. Because it ingly, none of the references discloses generally easier to establish obviousness healing or treatment with negative pres- higher ordinary under a level of skill Only sure. the Zamierowski reference dis- art, Toys, Innovention LLC v. MGA treating healing closes only wounds and (Fed.Cir. Entm’t, 637 F.3d printed publications Chariker-Jeter 2011) (“A sophisticated less level skill capable disclose seal that is of maintain- generally favors a determination of nonob ing pressure. viousness, patentee, and thus the while a higher level of skill favors the reverse.” Even if the references dis
(citation omitted)), that, we must assume closed all of the limitations of the asserted verdict, in light it adopted the claims, not, they which do & N still S lower level of skill & proposed by S N. proffer indicating why
needed evidence C. Differences Between the Claimed person having ordinary skill the art Invention and Prior Art would combine the references to arrive at jury explicitly found that the the claimed invention. Innogenetics, N.V. (Fed. art Labs., asserted claims exhibited sev- v. Abbott jury cient allow reach the just strong conclusion est and KCI as was as the evidence that the Chariker-Jeter method not used We, course, Sky. presented in Blue base our negative pressure' ‘treat wound with conclusion on the evidence in the current claims.”). required by point, On this record. presented evidence in this case Wake For- only copying Cir.2008) concluded post-KSR “some (holding that from existed. must be shown motivation kind of source, under- so can some *24 testimony Forest re- presented Wake ordinary would person of skill why
stand garding objective each the indicia found or combining two thought of either have 22827:3-32:10; jury. J.A. by the J.A. to one modifying references more 217771:11-23; J.A. 21077:19-79:15. Wake (citation patented [invention].” achieve that ex- leading Forest offered evidence omitted)). there is Significantly, whether perts skeptical that the field were art to combine references a reason could J.A. “counterintuitive” device work. Transocean of fact. question Offshore 22827:3-12, 22828:21-29:23, J.A. J.A. Inc. v. Maersk Con- Drilling, Deepwater he expert One testified that 21078:4-79:5. 1296, USA, Inc., F.3d tractors put [neg- could you know how this “didn’t (Fed.Cir.2010) v. Frank- (citing McGinley pressure on a wound and not cut ative] (Fed. 1339, 1352 Sports, lin infection, supply, off the blood cause Cir.2001)). Here, only did & N offer S Indeed, Argen- Dr. etc.” J.A. 22827:3-9. establishing a to com- reason no evidence ta, patents, an inventor of the testified bine, Forest offered substantial but Wake hospital that where he worked was ordinary person having that a evidence allowing try him his concerned about to reason combine in the art had no skill wound, patient on a with a serious device to arrive at the art references could healed conven- which not be 22669:18-25; E.g., J.A. invention. claimed methods, but the “decision do [was] tional 22715:25-16:4; 22691:18-22; J.A. J.A. J.A. you patient] you try die or [the let do 22737:7-11; light 22753:24-54:3. J.A. every- something.” J.A. 20446:3-23. To verdict, must that jury’s we assume of the surprise, completely the device one’s no to com- there was reason it determined patient. this healed J.A. 20446:21-47:6. references, must prior art and we bine the community skeptical was The medical so finding it is factual because defer device, moreover, patents’ that evidence. supported substantial difficulty publishing had their inventors journals,
findings peer-reviewed J.A. (Reviewers Objective of Nonobviousness journal D. Indicia from the 20501:1-19 Surgery and Reconstructive stat- Plastic asserted respect With '081 way that this was ed that “there was no claims, following indicia found this”), possible, that this device could do (1) success; commercial nonobviousness: away by they and were turned conference (3) (4) (2) need; unex long copying; felt they attempted pres- when organizers results; (5) others; acceptance by pected 20502:10-15; J.A. discovery. ent the J.A. (6) respect skepticism. initial With and 20501:3. claims, found '651 asserted Despite skepticism, and 116 on the basis this initial over time that for claims 109 42, widely adopted praised. and the method claim the device and performing performing 22830:6-31:8, 21079:10-12. Wake 121 on the basis J.A. J.A. claim 42, testimony experts indicia of presented of claim same Forest method way “changed the present. Regarding patented that the device nonobvious were 21079:11-12, and surgery,” performing on we do J.A. claim the basis treating ... “changed way claim on the we’ve been of claim and method twenty, thirty years.” for the claim wounds last performing the method of basis Indeed, secondary own tending S & N’s ex- J.A. 22831:1-3. considerations to show para- “a pert device was non-obviousness.” J.A. On the basis testified record, of this more than digm healing” it “is there is substan- shift wound way supporting tial evidence changed findings so it’s effective that success, need, long-felt of commercial surgeons fellow treat serious [he] [his] results, unexpected date, copying, superior 22409:11-10:11. To wounds.” J.A. spread field, wide acceptance been used more than device has skepticism. initial three million 21753:22-25. patients.
Indeed, Medical called Harvard School “exciting therapeutic ap-
device an novel E. The Ultimate Conclusion wounds,” 20504:22-05:2, proach to J.A. of Obviousness Association of Plastic Sur- American Having jury’s determined geons the last recognized device as implicit explicit several factual find plastic “biggest decade’s advance in the evidence, ings supported by are substantial surgery field.” J.A. 22762:10-15. The ef- legal “we examine the [ultimate] conclusion praise fectiveness of device and this de novo to see it [of obviousness] whether has made it a commercial with success $1.4 in light is correct of’ these factual find billion in sales. annual J.A. 21771:12-13. (internal ings. Jurgens, at 927 F.2d
Finally,
Forest proffered
Wake
testimo-
omitted);
citations
Wyers
see also
v. Mas
ny that the
has
copied.
device
been
For
Co.,
(Fed.Cir.
ter Lock
616 F.3d
example, in internal
and mar-
documents
2010) (Linn, J., concurring). Despite the
materials,
keting
repeatedly
S & N
com-
analysis,
district court’s detailed
we find
pares
Y.A.C.,
products
its
the com-
that, on
basis of
factual
mercial
patents.
embodiment
J.A.
findings, it
by granting
erred
S & N’s
20537:17-39:18;
22760:11-61:23; J.A.
J.A.
Motion
JMOL.10
Indeed,
expert
S &
ad-
20999:1-21.
N’s
explain-
mitted that he authored an article
Supreme
While the
Court made
ing how
create “an
off-the-shelf or
that a
application
clear
mechanical
of the
makeshift V.A.C.” J.A. 22410:18-12:6.
teaching-suggestion-motivation
test,
re
quiring
explicit
an
teaching
the prior
evidence,
the face of this
S & N
art, is inappropriate,
must
“[w]e
still be
offered no rebuttal evidence.
N’s own
S &
not
hindsight
careful
to allow
reconstruc
invalidity expert even admitted that he did
tion of references to reach the claimed
not
objective
consider
indicia of nonob-
any explanation
invention without
as to
reaching
viousness in
his conclusions re-
why
how or
the references would be com
garding
invalidity
patents.
J.A.
produce
bined to
the claimed invention.”
22396:20-97:8; J.A.
Sig-
22415:24-16:15.
Innogenetics,
here is noted, moreover, any As Dr. if Argenta provide would motiva- common sense of the doctors who created the devices references. See tion to combine these thought disclosed in the art Co., at 1240 n. 5 Lock Master wounds, pressure actually negative healed (“However, ... ‘expert as we noted [have] they place have left the devices would beyond the testimony regarding matters until the fully wounds were healed. is sometimes comprehension laypersons 22870. All of the removed the doctors essential,’ involving in cases particularly drained, devices after the wounds were but cases, technology. expert In such complex negative be- healing pressure before *26 critical, example, may be testimony gan. that were This indicates the doctors (or lack ... the existence there- establish using the disclosed devices and meth- of) references.” of a motivation combine pressure ods to heal with negative wounds (internal omitted)). citations that these they because did believe minimum, capable healing. of the In a creation claimed devices were such At fact, apparatus requires combining primary or method several of the references dis- references, purposefully which disclose closed that minimize the Zamierowski methods wounds, with in healing granulization while devices were treating or publications place perceived dangers that disclose a of the Chariker-Jeter because negative negative This capable maintaining pres- pressure. seal associated with any teaching significant record is devoid of reason amounts to evidence of sure. The evidence, references, away. these On of this hind- would combine the basis someone Indeed, experts sight provides only Forest’s reason Wake discernable however. prior reason to com- art Un- testified that there was no to combine the references. 22865:15-66:17; negative one could pressure J.A. less knew bine them. wounds, 22868:13-69:19; no used there would be J.A. 22870:22-71:12. be to treat addition, prior to arrive at indepen- references reason to combine the art both these functions, dently accomplish similar name- the claimed device methods.
ly, each draining fluids. Because device clear, moreover, that the dis It is effectively, a operates per-
independently
invention
trict court concluded that
art,
ordinary
in the
who
having
son
skill
was
it believed the
obvious because
claims
seeking
a better
merely
to create
de-
was
not new.
wound,
contained elements
were
drain fluids from a
would
vice to
patent
This
is incorrect:
com
reasoning
“a
no reason to combine the features of
have
posed
proved
elements is not
several
into a
device. Nor do
single
both devices
merely by demonstrating that each
obvious
provide
Bagautdinov
references
such
was, independently,
of its
known
elements
motivation to combine
Zamierowski
KSR,
prior
in the
at
art.”
550 U.S.
publica-
references and
Chariker-Jeter
29:2.
where the
presence
found the
of only
objective
one or two
indicia of nonobvious
Finally,
significant objective
indicia
ness. Nor is it a case where S & N
strongly weigh against
of nonobviousness
seriously disputes
Rather,
findings.
those
Mintz,
finding of obviousness.
679 F.3d at
strongly
evidence
establishes the exis
(Evidence
objective
indicia of non-
nearly
tence of
every objective indicia of
“may
obviousness
often establish that an
nonobviousness, namely commercial suc
invention appearing to have been obvious
cess, long-felt need, copying, unexpected
(citation
light
art was not.”
results,
superior
spread accep
wide
omitted));
Cyclobenzaprine,
In re
676 F.3d
field,
tance in the
and initial skepticism.
(same);
Crocs,
at 1075-76
see also
Inc. v.
See Allen Archery, Inc. v. Browning Mfg.
Comm’n,
Int’l Trade
598 F.3d
Co.,
(Fed.Cir.1987)
(Fed.Cir.2010) (“Secondary considerations
(“[P]raise from a competitor tends to indi
*27
‘can be the
probative
most
evidence of non-
that the
cate]
invention was not obvious.”
record,
in
obviousness
and enables the
(alteration
(internal
in original)
quotation
”)
... court to avert
trap
hindsight.’
omitted)); Gambro Lundia AB v. Baxter
Accessories,
(quoting Custom
Inc. v. Jef-
Corp.,
1573,
Healthcare
110 F.3d
1579
Indus., Inc.,
frey-Allan
955,
807 F.2d
960
(Fed.Cir.1997) (acknowledging that the ac
(Fed.Cir.1986));
Pharm.,
Ortho-McNeil
infringer’s
cused
“recognition of the im
Labs., Inc.,
Mylan
Inc. v.
520 F.3d
portance of this advance is relevant to a
(Fed.Cir.2008)
(“Objective
indicia
nonobviousness.”).
determination of
We
may
probative
often be the most
and co-
recently warned
dangers
about the
of ig
gent evidence of
in
nonobviousness
noring objective indicia of nonobviousness
record.”) (quoting Catalina Lighting, Inc.
Mintz,
in
where we said: “[s]imply be
Plus, Inc.,
v. Lamps
295 F.3d
cause the technology
easily
can be
under
(Fed.Cir.2002) (citation omitted)). We re-
stood does not mean that it will satisfy the
quire analysis
objective
indicia be-
legal
fact,
standard of obviousness.
they “provide objective
cause
evidence of
objective
simple
consideration of
technolo
patented
how the
device is viewed in the
gy
because,
is often the most difficult
once
marketplace, by
directly
those
interested
problem
appear
and solution
together
in
product.”
Corp.
Demaco
v. F. Von
in
patent disclosure,
the advance
Ltd.,
Langsdorff
Licensing
seems
(Fed.Cir.1988).
self-evident.”
view that the jury to substantial evidence for the have of known elements obvious combination found insufficient motivation combine. art. prior ground, this I agree majority On has not infringer accused estab- record, proven & N has On this S as a invalidity lished for obviousness mat- convincing clear evidence that the as- ter of law. The serted claims are obvious. district by failing error to defer
court committed findings and granting factual I Claim Construction on Because the dis- JMOL obviousness. describes, majority As the the asserted that the trict court concluded other issues claims cover and method apparatus an raised in motion for were S & N’s JMOL suction, treating by applying wounds grant moot of its decision JMOL light pressure,” “negative Bagautdinov, obviousness, remand, we reverse so Chariker-Jeter, Zamierowski are argu- the district court can consider those groups three art disclose ments instance. the first systems. similar suction treatment jury found that none of the asserted claims Conclusion would have been obvious over AND REMANDED art, REVERSED but the granted judg- district court (“JMOL”)
ment as a matter of law that all *28 invalid of asserted claims were for Costs obviousness. Each bear its own party shall costs. that, “It elementary patent is in law in determining whether a is valid ... DYK, concurring. Judge, Circuit step meaning the first to determine the agree majority scope I in with the deference each claim suit.” Nat’l Car, Ltd., jury’s implied Ry., in Pac. findings is owed to the Steel Ltd. v. Canadian (Fed.Cir.2004) 1319, (quot F.3d support of its nonobviousness verdict for 357 1334 Amazon.com, majority ing forth in the Inc. v. ably reasons set Barnesandno Inc., (Fed.Cir. ble.com, 1343, However, opinion. separately I write be- 239 F.3d 1351 (N. cause, view, 2001)); majority Grp. Sys. see TI Auto. my errs its also Am.), Am., L.L.C., “healing” Inc. v. N. construction of the limitations VDO (“Our 1126, 1139(Fed.Cir.2004) claims. jury these not F.3d Because valid construction, analysis properly ity two-step procedure: on claim is a ‘The instructed step interpreta impossible findings proper it is what first involves the determine ”) time, (quoting tion of the At the same because claims.’ Beachcomb made. ers, Int’l, infringer did not seek a con- Inc. v. WildeWood Creative accused (Fed.Cir Prods., limitations, “healing” struction of the we 1994)). pure- The a claim is a meaning used should assume the the correct issue, ly we legal patent”) 42, 109, which determine de novo. and claims and 121 Techs., Inc., Cybor Corp. (“the v. FAS 7,216,651 See 138 of U.S. Patent No. '651 (Fed.Cir.1998). 1448, 1451 F.3d The ma- patent”). The '081 claims both require jority disregards this well pro- established the apparatus to create negative pressure by failing directly cedure address the “for facilitating the healing of wounds”2 proper construction central claim and to have a “sealing means ... for “healing.” related to limitations maintaining said negative pressure.” '081 Patent col. 11. (emphases 52-58 add- majority excuses its failure to do so ed). The asserted '651 method all claims ground on the these claim construc- require “maintaining” negative pressure tion issues “were neither raised nor dis- until the “progressed wound has toward court, before the district cussed and were stage selected healing.” '651 Patent col. argued appeal.” Maj. in this Op. at added). 23 l. col. 25 ll. (emphases 47-48 agree 1346 n. 1. I with the majority that The district court was not asked to con parties have failed to address the claim strue “maintaining,” “healing,” or “a se directly, construction issues and have cho- lected stage healing” (collectively, “the sen instead to address the issues without limitations”), ‘healing’ but it did rule that proper benefit of a claim construction. the claims do not have a minimum-time Nonetheless, defendant-appellee Smith & limitation, a construction not challenged on Nephew does contest the extent to which appeal. J.A. 13390. We are unable to de “healing” required by claims, argu- termine whether the asserted claims are ing that attempted “Wake Forest to rede- obvious as a matter of law without under fine throughout its claimed invention standing the meaning of “healing” these litigation and continues to do so on appeal” limitations. Because these claim terms by “mischaracterize[ing] the claims as re- are central appeal, to these obligation our quiring ‘active’treatment of ‘clean’wounds to construe these limitations cannot be periods ‘extended’ time order to simply avoided because the district court wounds,” heal the even though “none of failed to do so. those limitations is in the claims.” Def.- Appellee’s Br. 41.1 And despite par- view, my the “healing” limitations are ties’ failure proper to seek a construction properly construed requiring only some limitations, “healing” it is simply not progress healing toward example, the *29 —for possible to meaningfully ques- address the formation of some new tissue or skin—and tion of obviousness without construing complete not healing or wound closure. these by limitations either making implicit The language of the stage “selected of (as assumptions about claim scope the ma- healing” clearly limitation itself indicates does) jority byor explicitly construing the that only some progress healing toward (as claims I propose). required. Additionally, claim 20 of the
The asserted claims are claims 2 '651 patent (upon 109, 116, and 5 which claims (“the 5,645,081 of U.S. Patent No. '081 and 121 depend) refers to “maintaining Nephew 1. Smith & argument also raises the 2. infringer appears The accused agree to that that “there is a lack preamble of substantial evidence language is a claim limitation. support jury’s finding ("The of nexus Def.-Appellee’s between See Br. 62 '081 claims secondary '081 claims and the merely require apparatus consider- an that facilitates ations.” wounds.”). Id. at 66. healing of
1373 proved may a of promote the formation condition include” number pressure reduced tissue,” conditions, speci- including “stages 121 im any and claim of of granulation healing stage provement healing selected of appropriate giv that “the or to a fies a of at least re-epithelialization or comprises type complex.” en of wound wound col. 23 wound.” Patent portion 40-41, '651 Patent col. 1 ll. 12 59- '651 col. U. 48-49, 11. 11. col. 30 30-31. district patent “facil 66. The '081 does not define as “granulation tissue” (as court construed itating healing” ... used in the claim during healing” and formed wound “tissue preambles), but it that the invention *30 the than suggests require char- that claims more stage healing initial of wound is “[a]n healing, such as by granulation progress the formation of some toward acterized complete healing example, that of im- or closure. For “[a] tissue” and selected state "closure,” patent "facilitat[ing] that closure” re- 3. While the does mention that the in- or application negative pres- application negative pressure quires the vention includes patentee As did not a time sufficient to facilitate closure until closure. noted the sure "for wound,” 48-49, challenge 2 court's that there id. col. it nowhere construction of the "healing” synonymous suggests that is no time limit claims. is 1374 ous, § ap- that invention it invalid under 103.” KSR Int’l majority states “the is 398, 419, for a 127 ‘negative pressure ... time Co. v. 550 U.S.
plies Teleflex 1727, (2007); 167 facilitate closure of the S.Ct. L.Ed.2d 705 see to sufficient ” Car, wound,’ was Steel Pac. Bagautdinov that different also Nat’l Ltd. v. Canadian Ltd., (Fed.Cir. 1319, it 357 Ry., the claimed invention because was F.3d 1339 from closure,” 2004) (“A finding until that two were used “to treat wounds inventions to ... “require designed problems that the asserted claims resolve different negative pres- in to be healed is insufficient to demonstrate that one wounds Maj. 1346-47,1363 (emphas- another.”); Op. away sure.” vention teaches from added). Beattie, (Fed.Cir. majority 1309, To the extent es re F.2d requirement complete 1992) (“[T]he reads closure require law does not that the claims, me to be seems into be combined for reasons references above, inventor.”). discussed the “heal- incorrect —as by the It is ir contemplated merely prog- limitations some ing” require prior purpose that the art relevant had the healing, the formation toward such as ress drainage long negative as it used regrowth tissue or of skin. granulation pressure heal wounds within the mean ing of the claims. Third, majority suggest seems prior art that was different below, erro- majority’s As discussed invention purpose claimed because the to incor- neous claim construction leads it prior cleaning, art drainage was rectly that the conclude claim limitations healing. majority than rather ex- prior are found in the that art and plains Bagautdinov draining that “for was secondary supported considerations a find- pu- fluid” and was when the “discontinued ing of non-obviousness. cleaned”; wound
rulent has been Zamierowski is “used to drain from either II Limitations Present Art the Prior inject fluid into the wound” was not construction, “for therapy”; used wound Char- the correct claim Under system” “drainage iker-Jeter was a limita- contrary majority, the claim “discontinued when the fistula closed are disclosed in Be- prior tions art. or substantial drainage from fistula cause the received no instruction Maj. limitations, stopped.” Op. meaning of the “healing” However, the a pur- impossible claims do not contain is determine whether pose requirement enough jury’s findings that heal- in support of its nonobvi- —it art, is disclosed if ing even were correct ousness verdict based on the However, this was not the intention of the art party construction.4 chal- Supreme lenging validity, inventors. As the Court ex- Smith did not Nephew, & plained, whether determining “healing” “[i]n seek a instruction on the obvious, subject matter of a “[Ljitigants right claim limitations. waive their the particular disputes neither nor the claim present motivation new construction purpose patentee avowed if they controls. are raised for the first time after matters reach of objective Corp. What is the trial.” v. Cordis Boston Scientific (Fed.Cir.2009) If the claim what Corp., claim. extends to is obvi- F.3d *31 obviousness, 65-70, questions specific 4. The did answer some see J.A. but none of those giving general specific questions addition to verdict in of non- is relevant to this issue. Conoco, Energy Secondary III Inc. v. & Envtl. Considerations (quoting 1349, (Fed.Cir. Int’l, L.C., 460 F.3d errs, view, my The majority also 2006)). therefore should assume that We finding properly that could rely the correct claim construc jury used secondary to find considerations tion. claims The failure to con- non-obvious. construction, the Ba- proper Under the limitations affects “healing” strue not Chariker-Jeter, and Zamierow- gautdinov, only prima obviousness, of facie case all meet prior art the limita- groups ski of secondary also the analysis but consid- “maintaining” negative pressure tions of erations, as cannot we determine whether stage “for or until a “selected healing” ... secondary consider- findings of they explicitly because disclose healing” proper ations were on a based understand- (i.e., and skin re-growth of tissue ing of claim scope. “Evidence of second- re-ep- tissue granulation formation of and ary must be reasonably considerations ithelialization). Bagautdinov The method commensurate scope with the sealing ... of purulent “accelerates Kao, claims.” In Huai-Hung re wounds,” appearance of granulat- and “the 1057, (Fed.Cir.2011). Secondary con- around the ed tissue” was seen fourth or patentee’s siderations related to a com- fifth treatment. J.A. day vacuum product probative mercial is not of nonob- publica- the Chariker-Jeter One of if viousness the asserted claims are far that “an increased rate of tions states than broader that commercial embodi- granulation re-epithelialization seen is Here, notes, majority ment. as the there drainage wound with the closed suction paten- was substantial that evidence system.” And J.A. 10051. Zamierowski (1) product tee’s was a commercial suc- healing” “promotes states that it (2) cess; long-felt to a responsive was present particularly “the invention is well (3) (4) need; others; copied by was had regeneration ... adapted for the of skin (5) results; unexpected accepted 10067.5 graft donor sites.” (6) others; skepticism. initial faced applied each of these references Because Maj. Op. secondary at 1367. These con- “healing” negative for within the pressure siderations, however, were related claims, it meaning of the irrelevant utilizing use of the commercial device teach away whether these references from patent periods to close extended prolonged application negative more completely heal wounds.6 This evidence pressure. There is no substantial evidence clearly if the would be relevant majority contrary. errs complete healing claims were limited to these claim concluding that limitations above, closure, art. wound present were not but as discussed tissue.”); suggestion My promotes granulation majority’s 5. The that Zamierowski device (”[H]e maintaining negative pres- really “failed to disclose J.A. 22669:5-8 does talk progressed maintaining pressure healing, about sure until the wound has to a Maj. Op. stage healing,” progressed until the wound to the select- has selected incorrect; stage healing. talk majority ed He doesn’t about testimony thus cites formation, granulation promotion tissue merely states that Zamierowski does not that.”). granulation tissue formation. See J.A. discuss follows, (Q. "It 22457:15-19 fact granulation, example, Argenta, mention that he’s 6. For Dr. an inventor on he doesn't granulation patents, surprised stating promotes he was that he tis- testified that patient growth?” "Well ... he when with a serious wound sue A. doesn't state: *32 require only progress some toward claims (c/o SHELL OIL COMPANY was no substantial evi- Gulf
healing. There Services, secondary Inc.), dence that there were consider- Coast Drawback Plaintiff-Appellant, relevant to the invention as set ations opposed claims as to the far forth v. narrower commercial embodiment. STATES, Defendant-Appellee. UNITED
IV Motivation to Combine describes, is, majority there how- As the No. 2011-1531.
ever, evidence that Bagautdi- substantial United States Court of Appeals, pus pockets nov and Chariker-Jeter treat Federal Circuit. fistulae, respectively, rather than “wounds,” Bagautdinov, and that Zamier- Aug. owski, public and the Chariker-Jeter use Thus, adequate do not disclose an seal. least, obviousness, very to find per- ordinary
son of skill would have needed a
motivation to combine the treatment of
“wounds” Zamierowski with the seal
from the publications. Chariker-Jeter may
While motivation to be combine ad- summary judgment
dressed or JMOL circumstances, appropriate Wyers see v. Co.,
Master Lock
(Fed.Cir.2010), fact, it is still a question of infringers
and the accused have failed to
show that there was not substantial evi-
dence to support finding of insufficient words,
motivation to combine. In other assumption
under the used
the correct construction of “healing”
limitations, there is substantial evidence
for the to have at least found the
asserted claims non-obvious due to insuffi- Thus,
cient motivation to combine. I
agree with the majority’s ultimate conclu-
sion that grant- the district court erred in
ing JMOL of obviousness. " completely "heal[ed] after several "[b]ecause months "stunned” we had used the best added). (emphasis treatment. techniques 20446:22 we knew to date to close this expert patient
Another testified that when a wound and none had worked and this tech- counterintuitive, nique, with an ulcer that would not heal was healed which was worked.” treatment, eight added). after (emphasis weeks of he was J.A. 22828:23-22829:2 notes support evidence there substantial used on Mr. Aderholt system (1) finding none the Chariker- that: disclosed in the Chariker-Jeter system of a discloses treatment Jeter references 22714:25-15:9. Wake publications. meaning patents wound within expert testified that (as Forest’s also pocket); or pus distinct from a fistula (2) did not have a public use Chariker-Jeter do not the Chariker-Jeter references maintaining negative pres- capable negative pressure to heal seal disclose use of (3) wounds9; Mr. skin had sev- the Chariker-Jeter because Aderholt’s treat sure away promoting teach freely publications let air flow. sump drains that eral ("[W]e F.3d at 1020 find we references. conclusion reached 9. This is same testimony was suffi- of KCI's witnesses Sky respect the Chariker-Jeter Blue
Notes
notes of “re-growth as “re-epithelialization” “promote of may migration be used 10373, 10377 omit- (emphases skin.” J.A. tissue,” density ... “reduce in a bacterial ted). objected to these con- party Neither wound,” “prevent!] or the infection a [in appeal. These additional structions on severe,” from becoming wound] burn [too] 121 demon- limitations in claims healing.” ... “facilitating '081 Patent col. healing” of stage that “a selected strate 57-58, 1-2, col. 2 ll. ll. col. 3 67-col. l. complete healing. Fur- refer cannot 1.3 thermore, dependent unasserted Although the majority opinion does claims and 122-124 of the '651 118-120 explicitly “healing” construe the limita- other more restrictive ex- provide tions, assumptions it seems to make three healing”: of amples stage[s] of “selected meaning of these limitations. as wound,” “sub- closure “substantial First, majority suggests that stantially filling granula- the wound with application require negative pres- claims tissue,” “migration epithelial tion particular length a sure for extended wound,” tissue toward the subcutaneous example, majority explains time. For “a reduction volume [diameter did Bagautdinov pressure not sustain the wound a depth] by predetermined long enough period of time” and “for “presumption that an amount.” Under away negative from taught applying pres- claim should not be construed independent periods”; extended and that sure “for limitation requiring depen- added taught contin- “away Chariker-Jeter Control claim,” Curtiss-Wright Flow dent device, long-term use of as direct- ued Velan, Inc., v. Corp. Maj. patents.” the '081 '651 ed (Fed.Cir.2006), stage “a selected of heal- above, But Op. as discussed ing” to not limi- presumed include these correctly court the district determined tations. claims do not have a minimum time specifi- There is also no indication in the limitation, and that construction is “healing” stage or “selected cations challenged appeal. any particular stage healing” refers Second, extent, majority to some healing; patent simply the '651 notes that