Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.

303 F. App'x 884
CourtCourt of Appeals for the Federal Circuit
DecidedDecember 18, 2008
DocketNos. 2007-1296, 2007-1347
StatusPublished

This text of 303 F. App'x 884 (Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 303 F. App'x 884 (Fed. Cir. 2008).

Opinion

LOURIE, Circuit Judge.

Cardiac Pacemakers, Inc., Guidant Sales Corporation, Mirowski Family Ventures, LLC, and Anna Mirowski (collectively “Cardiac” or “appellants”) appeal from the decision of the United States District Court for the Southern District of Indiana granting summary judgment of invalidity of claim 4 of U.S. Patent 4,407,288 (“the '288 patent”). See Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 483 F.Supp.2d 734 (S.D.Ind.2007) (“Invalidity Decision”). St. Jude Medical, Inc. and Pacesetter, Inc. (collectively, “St. Jude”) cross-appeal the district court’s decision permitting damages under 35 U.S.C. § 271(f). See Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 418 F.Supp.2d 1021, 1027-30 (S.D.Ind.2006) (“Damages Decision”). Because the district court erred in concluding that it could find the '288 patent anticipated, we reverse on invalidity. As infringement has already been decided by the court, we remand the case for a determination of the damages award. Such a determination should be made in accordance with the district court’s prior rulings, which we affirm, limiting damages to those devices that can be shown to have executed the steps comprising claim 4 of the '288 patent.

BACKGROUND

This is a patent dispute relating to implantable cardioverter defibrillators that has been before us on four previous occasions. See Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 296 F.3d 1106 (Fed. Cir.2002); Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371 (Fed. Cir.2004) (“2004 Opinion ”); Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 144 Fed.Appx. 106 (Fed.Cir.2005) (“2005 Reassignment Order”)-, In re Cardiac Pacemakers, Inc., 183 Fed.Appx. 967 (Fed. Cir.2006) (“2006 Writ Order”). Three of our prior decisions, the 2004 Opinion, the 2005 Reassignment Order, and the 2006 Writ Order, are at issue in this appeal.

Implantable cardioverter defibrillators (“ICDs”) are small devices that detect and correct abnormal heart rhythms that can be fatal if left untreated. Defibrillators work by administering electrical shocks to the heart, those shocks being calibrated to restore normal heart functioning. There are different types of electrical shocks that defibrillators can be programmed to administer, including pacing shocks (which are relatively low power shocks), defibrillation (relatively high power shocks), and cardioversion, the definition of which has been a source of dispute throughout the protracted litigation of this case.

Cardiac owns various patents relating to cardiac defibrillators, including the '288 [887]*887patent. The '288 patent claims a method of heart stimulation using an implantable heart stimulator that is capable of detecting heart arrhythmias, or irregular heart rhythms, and of being programmed to treat the arrhythmia through either single or “multimode” operation. Multimode operation allows defibrillators to respond to arrhythmias by applying first one type of shock and then, if unsuccessful, administering a second type of shock. Multimode allows an implantable cardioverter defibrillator to administer various types of shocks consecutively until the normal heart rhythm is restored.

Cardiac brought an infringement action against St. Jude, accusing St. Jude of selling ICDs that infringed Cardiac’s patents. In 2001 the case went to trial, and a jury returned a verdict awarding Cardiac $140 million in royalties for infringement of U.S. Patent 4,316,472 (“the '472 patent”). As for the '288 patent, the jury found the patent valid and enforceable, but not infringed by St. Jude’s ICDs. The jury rejected St. Jude’s arguments that the invention of the '288 patent was obvious in light of various prior art references, including U.S. Patent 3,805,795 (“Denniston”) and United Kingdom Patent Application 2,026,-870 (“Duggan”). The jury also rejected St. Jude’s argument that the '288 patent was unenforceable for inequitable conduct.1

Following the trial, the district court granted several post-verdict motions that overturned the jury verdict and conditionally granted a new trial on several issues that St. Jude had lost at trial. The court granted St. Jude’s JMOL motions holding the '472 patent not infringed and invalid, as well as St. Jude’s motion for a conditional new trial on damages. That decision vacated the damages awarded by the jury. Cardiac has not appealed any of the court’s decisions regarding the '472 patent.

Regarding the '288 patent, the district court denied Cardiac’s request for a new trial on infringement. Cardiac had claimed that it had been denied a fair trial on the '288 patent due to St. Jude’s opening statement and presentation about the inconsistent reports of Dr. Joseph Bourland, one of Cardiac’s primary experts. The court also granted St. Jude’s JMOL motion and request for a new trial, finding that the '288 patent was invalid on the grounds of obviousness and lack of best mode. The court denied St. Jude’s JMOL motion of unenforceability in which St. Jude argued that the '288 patent was unenforceable due to Cardiac’s alleged failure to pay proper maintenance fees.

Following the district court’s decisions, Cardiac appealed the court’s grant of JMOL of invalidity of the '288 patent as well as the court’s rejection of JMOL of infringement of claim 4 of that patent. On appeal, we reversed on both issues. Regarding validity, we held that there was “substantial evidence whereby a reasonable jury could have reached the verdict that it would not have been obvious in March 1981 to provide an ICD that includes cardioversion,” and therefore reinstated the jury verdict that the “'288 patent is not invalid for obviousness.” 2004 Opinion, 381 F.3d at 1378-80. We also found that the district court’s conditional grant of a new trial on obviousness “exceeded the court’s discretionary authority.” Id. at 1380.

Regarding infringement, we reversed the court’s claim construction and therefore vacated the jury’s finding of non-infringement. We held that the district [888]*888court had erred in finding that the “determining” step of claim 4 was a “step-plusfunetion” limitation under 35 U.S.C. § 112 116 and remanded the case to the district court to modify the claim construction of the “determining” step in accordance with our opinion. Id. at 1382. Lastly, we agreed with St. Jude that our reversal of the district court’s claim construction entitled St. Jude to a “jury determination on the question of infringement.” Id. at 1383.

We summarized our holding as follows: We affirm in part and modify in part the district court’s claim construction, reinstate the jury verdict of validity, and remand for a new trial on infringement and reassessment of damages.

Id. at 1374.

On remand, the case was returned to Judge Hamilton. Cardiac challenged the assignment, claiming that Seventh Circuit Rule 36 required automatic reassignment of a case remanded for a new trial to a new judge.

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303 F. App'x 884, Counsel Stack Legal Research, https://law.counselstack.com/opinion/cardiac-pacemakers-inc-v-st-jude-medical-inc-cafc-2008.