CAFC Finally Affirms a Finding of Infringement by Equivalents

Dr. Voda v. Cordis Corp. (Fed. Cir. 2008)

Dr. Voda’s case is an exciting tale of an individual inventor litigating against a major corporation in the red sandy soil of western Oklahoma. 

A jury found that Cordis catheters infringed Voda’s patents and adjudged a reasonable royalty to be 7.5% of gross sales. The jury also found the infringement willful and the patents not invalid.  The district court then affirmed the jury verdict but denied Voda’s request for injunctive relief.

Claim Construction: Voda’s claim included the requirement that the catheter be engaged “along a line” of the aorta. The district court, however, found that the claim is not limited to linear portions of the aorta. On appeal, the CAFC confirmed the construction — reminding us that “the context in which a term is used in the asserted claim can be highly instructive.” Phillips. When engaged, it is clear that the catheter may curve along the aorta.

The specification does indicate that the “present invention [includes a] straight portion.” However, the CAFC refused to see that statement as a “clear disavowal of claim scope” because the specification discusses other instances where the same portion could be curved.

Doctrine of Equivalents: Cordis had redesigned some of its products to avoid literal infringement. However, these were found to infringe under the Doctrine of Equivalents. In particular, a “second straight portion” claim element was not literally found in the Cordis products, but the jury found that the products did include an equivalent element.

At the court’s option, either of two tests of equivalent may be used:

Under the insubstantial differences test, “[a]n element in the accused device is equivalent to a claim limitation if the only differences between the two are insubstantial.” Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir 2004). Alternatively, under the function-way-result test, an element in the accused device is equivalent to a claim limitation if it “performs substantially the same function in substantially the same way to obtain substantially the same result.” Schoell v. Regal Marine Indus., Inc., 247 F.3d 1202, 1209-10 (Fed. Cir. 2001).

The CAFC looked to Voda’s experts to find evidence of insubstantial difference. In particular, Voda’s expert testified that the Cordis “curve portion” was essentially straight and that “cardiologists would have difficulty distinguishing the two during use.”  In addition, Voda introduced evidence that the Cordis curve portion “performed the same function as a straight portion, in the same way, to achieve the same result. . . . Accordingly, we affirm the jury’s findings of infringement with respect to these claims.”

Notes:

• EBay: Voda argued for an injunction based on the irreparable harm to its exclusive licensee. The CAFC rejected that justification — finding that the irreparably harmed must be the party seeking the injunction.
• Seagate: The CAFC vacated the willfulness finding that was based on pre-Seagate law.
• Festo: The CAFC did find that some of Voda’s claims were not infringed under the DOA. Those claims had been narrowed during prosecution and were subject to prosecution history estoppel.
• Prior Appeal: In the 2007 appeal in this case, the CAFC held that Voda could not assert its foreign patents covering the same product in US courts. [LINK]
• See Lemley & Allison: THE (UNNOTICED) DEMISE OF THE DOCTRINE OF EQUIVALENTS

 

Comments

[Malcolm Mooney]

The doctrine of equivalents isn't dead, it just smells funny.

[duckworth]

“[a]n element in the accused device is equivalent to a claim limitation if the only differences between the two are insubstantial.”

This test seems a little circular. An insubstantial difference is one that, um, doesn't make a difference.

[PT]

Am I missing something? From the '213 patent's spec(col.2:20-24): "the guide catheter of the present invention...in its relaxed state includes a first straight portion and a distal end portion. The distal end portion includes a second straight portion extending distally from the first straight portion." Yet, the CAFC says that the spec does not require the contact portion to be straight in its rest state.

[Jim H.]

PT,

"Includes" is like "comprises of" and not like "consists of."

If the spec read "[t]he distal end portion [consists of] a second straight portion extending distally from the first straight portion...", then there would be a straight and only straight requirement. "Includes" does not limit the requirement only to a straight portion.

[Just an ordinary white rabbit(TM)]

Finally, it is Happy Hour in Bermuda --- What to drink?, what to drink?, Manhattan?, Gin Martini?, Scotch & Soda?, Bourbon & Brooklyn Lager?, … so much to drink, so little time …

[Just an ordinary inventor(TM)]

I went with my favorite, a Manhattan with Early Times Kentucky Whiskey & Boissiere, 4:1, and a heavy dash of Bitters (I’m too old for a cherry).

[metoo]

"If the spec read "[t]he distal end portion [consists of] a second straight portion extending distally from the first straight portion...", then there would be a straight and only straight requirement. "Includes" does not limit the requirement only to a straight portion."

Um....not quite, Jim. The transitional language has nothing whatsoever to do with it. For example, one of the claim in question requires a "second straight portion joined to the first straight portion." The meaning of this limitation, as well as whether or not the device in question satisfies this limitation, has absolutely nothing to do with whether or not the claim uses "comprising", "including" or "consisting of." In other words, using the transitional phrase "consisting of" rather than "comprising" does not prevent application of the doctrine of equivalents.

What the court held is that, even though Cordis' product did not literally include a "second straight portion joined to the first straight portion" because the portion in question was curved, there was substantial evidence to support the jury's conclusion that the curved portion was the an equivalent of the "second straight portion" limitation. For example, the CAFC opinion indicates that the portion of the Cordis device was so slightly curved that a cardiologist would have trouble noticing that it was curved. The CAFC also held that there was evidence supporting equivalence under the function-way-result test.

[Jim H.]

metoo,

I agree with you.

My comment to PT was the use of "includes" in the spec and not as a transitional language in a claim. If I read the spec (i.e, not the claim), I would understand that the spec does not require the contact portion to be straight in its rest state, but the use of "includes" in the spec leaves open the possibility of a curved contact portion.

[metoo]

Jim - Sorry for missing that distinction in your post. On the other hand, I don't think the use of the word "includes" in the spec make any difference in terms of the application of the DoE. Yes, the spec is important for the DoE. But, the outcome of this case would not be any different if the spec used "consists of" rather than "includes" with respect to the second straight portion. In fact, had the patent owner made the argument at trial that the spec was written so as to "leave open the possibility of a curved contact portion", the defendant may have been able to successfully argue that a curved contact portion was disclosed in the spec - with the end result being no infringement since the DoE cannot be used to cover disclosed but unclaimed subject matter!

[Jim H.]

metoo,

True, but using "consists of" instead of "includes" in the spec would likely have affected the Markman construction.

[GP]

Anybody notice that PAIR is now requiring a certification check box on sign in?

[metoo]

Sorry Jim, but I do not agree at all. Such a change would have no bearing at all on claim construction - it would be utterly meaningless. I'm trying to be polite here, but you are confused.

[Malcolm Mooney]

Seems like the key facts here are really (1) there was no amendment with respect to the "straight" limitation so no estoppel issue; and (2) the "curve" in the infringing product was barely curved at all.

I suppose this case could be contrasted with that case a while back with the bone pin thingie that was supposed to be "perpendicular". I don't remember if the DOE was an issue in that one ...

I'm more interested in the willfulness issue, frankly. The CAFC vacated the lower court's finding, but the issue is still alive, no? Can one willfully infringe **under the DOE**, post-Seagate? Did the defendant in this case willfully infringe **under the DOE**?

[Eurodisnae]

I'm no expert on the dreaded wilful infringement, but if someone tries to design around a patent claim and gets it wrong - presumably based on legal advice - should that get them off on wilfulness?

[smashmouth football]

Malcolm, Eurodisnae--

I think you point toward a logical inconsistency on willfulness in this case. The facts don't seem to support the inference of an intent to infringe, and probably don't support a recklessness theory either. Let's hope the CAFC was simply deferring to the District Court's role as fact finder, and remanding with transparently obvious "instructions."

[PT]

Metoo is correct JIm. Using "including or "consists of" would have zero bearing on if the claims required a "straight" second portion.

[Just Visiting]

There is some case law suggesting that when claim construction is complicated, even amateurish attempts to design around are enough to avoid willful infringement (even without an infringement opinon). My guess is the court won't find willful infringement with a work around that requires invoking the DOE.

Have there been any cases finding willfulness post-Seagate? I suspect that such cases are quite rare.

[Just Visiting]

There is some case law suggesting that when claim construction is complicated, even amateurish attempts to design around are enough to avoid willful infringement (even without an infringement opinon). My guess is the court won't find willful infringement with a work around that requires invoking the DOE.

Have there been any cases finding willfulness post-Seagate? I suspect that such cases are quite rare.

[Zak]

PT, Metoo, Jim

"Yet, the CAFC says that the spec does not require the contact portion to be straight in its rest state." -- I am having issue with this as well. I guess it is because the court held: "The '213 prosecution history ... does not clearly and unmistakably limit the scope of the claims 1 through 3 to methods in which the contact portion of the chather is straight in its rest state." For this to be true the "use state" would have to be different from the "rest state." However, I did not see any such finding of fact. I thought (and I may be mistaken) that when the guide wire was removed after insertion the use phase began and the catheter returned to its rest state. So wouldn't that makes its use state equal to its rest state or am I missing something?

[Zak]

Malcolm, Eurodisnae:

I was suprised that the CAFC remanded the willfulness issue to the district court for a final determination instead of just ruling on the issue themselves. I think that the "evidence showing that [Cordis] obtained several opinions of counsel regarding whether its redesigned XB catheters infringed Voda's patents" and the fact that infringement was not clear cut due to issues raised by the prosecution history clearly negates a finding of willfulness.

[Babel Boy]

Contrary to my personal jihad against unqualified district court (and circuit court) judges deciding complex patent cases, it seems to me that this Okie judge, Tim Leonard, did a marvelous job on this case. And so did Voda’s patent and litigation lawyers.

The case does have it’s mysteries, tho’. I’m probably missing something.

Cordis got slammed on the methods claims. I don’t understand why Cordis did not take a Muniauction approach and argue that they were not a single actor infringer of the ‘213 methods claims. The method steps included providing the catheter (which Cordis did), but also shoving the catheter up the aorta and engaging the aortic wall. Surely, Cordis did no such thing and did not contract with anyone else to do so. Where was the argument?

Cordis’ argument of the ‘213 limitation of “along the line” is simply daft. Anyone who argues that “straight “ is inherent in “line” has got a screw loose. Euclid would choke on this abomination. . “Line” doesn’t mean straight line; “straight line” means straight line. “Line” includes all lines, such as curved, sinusoidal, skewed, bee, and coke. Even without the claim differentiation or DOE rationales, this was a good call, Judge Tim.

But the ‘213 patent hung on a thin thread – an aorta engagement area of only 1.5 cm long (or longer). Voda added that limitation to avoid a 102 rejection. Cordis apparently could not design around this limitation with a 1.4 cm engagement length without infringing the 102 PA that was cited against Voda. So they had to try the failed "slightly curved" approach. Bummer. White knight to e7. Check.

Gajarsa sees a perfect world in which all arguments are fully developed within the page limitations: “Cordis offers only a perfunctory argument that it would have been obvious at the time of Voda’s invention to increase the length of the contact portion of prior art catheters to 1.5 cm or more to provide additional support during use.” Sure, the 1.5 cm limitation was obvious as a zit on Paris’ bum, but perfunctory arguments don’t cut it. Checkmate.

Ha, ha, ha . . . how many times have you been smacked with a 103 rejection based on a perfunctory argument with no evidential support? Almost every OA. Why doesn’t the PTO apply these standards to its examiners? They have no page limits.

Garjasa’s Festo analysis of Claims 4 & 5 of the ‘213 patent is toilet-stuff. Voda amended Claim 4 to add the second catheter section being a “substantially straight section” to avoid PA. While this was a Festo surrender of all territory that does not require a second substantially straight section, Voda should still get the benefit of DOE to protect equivalents of “substantially straight.” Gajarsa says as much but then adds the non sequitor: “the prosecution history of claims 4 and 5 of the ’213 patent bars a finding of equivalence between the redesigned curve portion of the Cordis catheters and “first substantially straight leg” limitation.” Slightly curved is equivalent to substantially straight, and Voda is entitled to DOE on substantially straight. Bad call. Am I missing something here?

I'd give Tim an “A”, and the CAFC a “C+” on this one.

[MaxDrei]

Have I got this right? In litigation, after the patent issued, Cordis offered only "perfunctory" arguments, why it was obvious to move from the prior art "1.4cm" to ">1.5cm". No clear and convincing evidence of invalidity there then. Earlier, during prosecution of his app., Voda overcame a 102 objection based on the "1.4cm" earler patent by including the "1.5cm" limitation in his claim. How "perfunctory" was the PTO examination of patentability of "1.5" over "1.4" I am now wondering. Did Applicant Voda reveal in his app an unexpected technical effect that materialises, when you go from 1.4 to 1.5, ie increase the length of contact with bodily tissue by 1mm. How did Voda find out about this effect, I wonder. How did it convince the PTO, I wonder. How could Cordis lose in the District Court, on these facts, I wonder.