Stent Wars: Return of the Dictionary and No Inequitable Conduct

Addressing a host of issues, the U.S. Court of Appeals for the Federal Circuit found a district court’s claim construction was proper as was its consequent finding of no infringement.  The Court also found that under its remand mandate, the district court properly revisited inequitable conduct and correctly found no inequitable conduct because specific intent to deceive was not established.  Cordis Corp. v. Boston Scientific Corp., Case Nos. 10-1311, -1316 (Fed. Cir., Sept. 28, 2011) (Gajarsa, J.).

This is yet another opinion coming from a series of litigations known as the “Stent Wars,” which the Court describes as an “epically expensive litigation saga.”   In this installment, Cordis appealed a judgment as a matter of law (JMOL) of non-infringement, and Boston Scientific cross-appealed the district court’s finding that the patents are not unenforceable due to inequitable conduct. 

The Court began by considering the district court’s claim construction.  Specifically, the parties disputed the meaning of the term “waves” included in the construction of the term “undulating.”  Because Boston Scientific did not object to the district court’s jury instruction, the construction was not reviewed de novo, but rather under the “ordinary meaning of the language of the jury instruction.”  Interestingly, in resolving the dispute, the Court first looked to a 1968 (i.e., invention contemporaneous) Webster’s Dictionary and then to the intrinsic evidence.  Based on its approval of the district court’s instruction on the term “undulating” the Court affirmed the finding of no infringement.

As to unenforceability, the Court began by addressing Boston Scientific’s argument that the appeal was improperly before the Court for two reasons.  First, Boston Scientific argued appeal was improper because a parent patent (in connection with which the allegations of inequitable conduct primarily arose) was not before the Court.  The Court relied on its “inextricably linked” precedents to determine that the validity of both patents was properly before the Court.  Second, Boston Scientific argued that on remand the district court impermissibly violated the Court’s mandate by reconsidering its findings of intent to deceive.  The Court rejected this argument as well, noting that it would be illogical for the Court to remand for additional findings on unresolved outcome determinative issues while simultaneously foreclosing reconsideration of the outcome after the district court considered those issues for the first time.

Reaching the merits of the inequitable claim, the Federal Circuit, citing to its Therasense decision (see IP Update, Vol. 14, No. 6), affirmed the district court finding that the evidence adduced at trial was insufficient to establish that the inventor had the requisite specific intent to deceive the U.S. Patent and Trademark Office (USPTO).  However, the Court found that the evidence was such that Boston Scientific proved the threshold level of intent to deceive, but that proof was rebutted by inventor’s good-faith explanation.  In this regard, the Court noted its deference to the district court on witness credibility issues.

Practice Note:   With regard to claim construction, this case demonstrates that despite the negative treatment of dictionaries in Phillips, the Court will still consider extrinsic dictionary evidence when construing claim terms.  More importantly, this case highlights the importance of timely objections to jury instructions on claim construction.  Had Boston Scientific objected to the claim construction charge, the Court would have likely reviewed the claim construction under its de novo standard.