Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc.

554 F.3d 1010, 89 U.S.P.Q. 2d (BNA) 1801, 2009 U.S. App. LEXIS 1788, 2009 WL 223733
CourtCourt of Appeals for the Federal Circuit
DecidedFebruary 2, 2009
Docket2007-1340, 2007-1341, 2007-1342
StatusPublished
Cited by57 cases

This text of 554 F.3d 1010 (Kinetic Concepts, Inc. v. Blue Sky Medical Group, 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
Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc., 554 F.3d 1010, 89 U.S.P.Q. 2d (BNA) 1801, 2009 U.S. App. LEXIS 1788, 2009 WL 223733 (Fed. Cir. 2009).

Opinions

Opinion for the court filed by Circuit Judge PROST. Dissenting opinion filed by Circuit Judge DYK.

PROST, Circuit Judge.

Defendants Medela, Inc. and Blue Sky Medical Group, Inc. appeal the denial of their motion for judgment as a matter of law on obviousness and their alternative motion for a new trial on obviousness. They also appeal the district court’s claim construction and failure to declare several claim terms indefinite. Plaintiff Kinetic Concepts, Inc. cross-appeals the denial of [1014]*1014its motion for judgment as a matter of law on infringement and its alternative motion for a new trial on infringement.

For the reasons set forth below, we affirm.

I. BACKGROUND

Kinetic Concepts, Inc., KCI Licensing, Inc., KCI USA, Inc., and Wake Forest University Health Sciences (collectively, “KCI”) brought suit against Medela AG, Medela, Inc., Richard Weston, and Blue Sky Medical Group, Inc. (collectively, “Defendants”), alleging infringement of U.S. Patent Nos. 5,636,643 (“'643 patent”) and 5,645,081 (“'081 patent”), as well as claims of false advertising, unfair competition, and conspiracy. Defendants responded with counterclaims alleging that the asserted patents were invalid and unenforceable. After a six week trial in the United States District Court for the Western District of Texas, the jury returned a verdict that the asserted patents were not shown to be invalid, unenforceable, or infringed. The jury also found against KCI on its false advertising, unfair competition, and conspiracy claims.

After trial, Defendants filed a motion for judgment as a matter of law (“JMOL”) that the asserted claims are invalid as obvious under 35 U.S.C. § 103. In the alternative, Defendants requested a new trial on obviousness. KCI filed its own motion for judgment as a matter of law on infringement, or in the alternative, requested a new trial on infringement. The district court denied each of these motions.

Defendants now appeal the district court’s denial of their JMOL motion on obviousness, arguing that under a proper claim construction no reasonable juror could have found that the prior art did not render the asserted patents invalid. In the alternative, Defendants ask us to order a new trial on obviousness because the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007), effected a supervening change in the law that retroactively rendered the jury instructions on obviousness erroneous. They also appeal the district court’s determination that “selected stage of healing,” “reduction in bacterial density in the wound by at least 50%,” and “screen for prevention of overgrowth” are not indefinite claim limitations. KCI cross-appeals alleging that the district court erred by denying its motion for JMOL of infringement, and alternatively, requests a new trial on infringement because Defendants presented a “practicing the prior art” defense, compared the accused product to KCI’s product, and engaged in “class warfare” before the jury.

We have jurisdiction under 28 U.S.C. § 1295(a)(1).

A. The Asserted Patents

The patents at issue relate to treating difficult-to-heal wounds by applying suction, which is referred to in the patents as “reduced pressure” or “negative pressure.” Claims 1 and 11 of the '643 patent, with emphases added, are illustrative:

1. An appliance for administering a reduced pressure treatment to a would [sic] comprising:
(a) an impermeable cover adapted to cover and enclose the wound and adapted to maintain reduced pressure at the site of the wound;
(b) a seal adapted to seal said cover to tissue surrounding the wound;
(c) reduced pressure supply means for connection to a source of suction, said reduced pressure supply means cooperating with said cover to supply said reduced pressure beneath said cover; and
[1015]*1015(d) a screen adapted to prevent overgrowth of wound tissue, said screen being located between said wound and said cover.
11. A method treating a wound comprising the steps of:
(a) applying a reduced pressure to the wound, wherein said applying step comprises the steps of:
(i) placing a porous screen over the wound;
(ii) locating an impermeable cover over the wound, said cover having a suction port;
(in) sealing the periphery of said impermeable cover to tissue surrounding the wound; and (iv) operably connecting said suction port with a vacuum system for producing said reduced pressure; and
(b) maintaining said reduced pressure until the wound has progressed toward a selected stage of healing.

In addition to claims 1 and 11, KCI asserted claims 2, 3, 6, 7, 8, 12, 13, 14, 16, 26, 27, 28, 29, and 32 of the '643 patent. KCI also asserted claims 1, 3, 5, 8, 9, 11, 12, 13, 27, 31, 33, 36, 37, 54, 56, 58, 61, 62, 64, 65, and 66 of the '081 patent.

The issues on appeal focus on six limitations, at least one of which is present in each of the asserted claims. First, each of the asserted claims in both the '081 and '643 patents requires using “reduced” or “negative” pressure to “treat a wound” or “facilitate the healing of a wound,” either as part of the preamble1 or the body of the claim. Second, there is a “screen” or “screen means” limitation in each asserted claim of the '081 patent and claims 1, 2, 3, 11, and 12 of the '643 patent. Third, claims 12, 27, 33, 36, 37, 65, and 66 of the '081 patent and claims 13, 14, 28, and 29 of the '643 patent have limitations requiring the use of intermittent suction. Fourth, an “impermeable cover” limitation is present in claims 1, 2, 3, 6, 7, 8, 11, 12, 16, 26, 27, and 28 of the '643 patent.2 Fifth, claims 11, 12, 29, and 32 of the '643 patent contain a limitation requiring treating toward a “selected stage of healing.” Finally, claim 32 of the '643 patent recites “a reduction in bacterial density in the wound by at least 50%.”

B. Claim Construction

The parties have devoted significant attention to the construction of “treating a wound” and “facilitating the healing of wounds.” Defendants argued before the first claim construction order that “treating a wound,” as used in claim 13 of the '643 patent, should be construed as “giving medical care to an injury,” or in the alternative, “giving medical care to (1) trauma to any of the tissues in the body, especially that caused by physical means and with interruption of continuity [or] (2) a surgical incision.” Kinetic Concepts, Inc. v. Blue Sky Med. Corp., No. 03-CV-0832, at 5 (W.D. Tex. June 28, 2005) (“Order Construing Patent '613 Terms ”) (alteration in original).

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554 F.3d 1010, 89 U.S.P.Q. 2d (BNA) 1801, 2009 U.S. App. LEXIS 1788, 2009 WL 223733, Counsel Stack Legal Research, https://law.counselstack.com/opinion/kinetic-concepts-inc-v-blue-sky-medical-group-inc-cafc-2009.