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Failure to raise KSR post-trial but pre-judgment results in waiver
March 05, 2009

In a recent decision, the Federal Circuit affirmed a jury's verdict of infringement, no obviousness, and no inequitable conduct. On appeal, the defendant for the first time argued the jury's verdict should be reversed in light of KSR.

The Federal Circuit held the argument had been waived. The jury reached its verdict on December 8, 2006. Post-trial motions were fully briefed on February 20, 2007, and KSR was decided on April 30, 2007. However, the district court did not rule on the post-trial motions until August 23, 2007, and final judgment was not entered until August 24. Given the four month gap between the decision in KSR and the rulings on the post-trial motions, the Federal Circuit held the defendant was required to raise the issue before the district court. As a result, the court considered the argument waived.

The Federal Circuit also rejected the defendant's arguments regarding noninfringement and inequitable conduct.

Dr. Peter Rentrop is a cardiovascular interventionalist, and in the 1990s used excimer laser catheters in procedures. These catheters use lasers to penetrate arterial blockages to enlarge the artery to increase blood flow and, in some cases, to allow for other treatments, such as stents or balloons to be administered. Spectranetics is the only company with FDA approval to sell excimer laser catheters for use in human angioplasty. Dr. Rentrop became dissatisfied with the excimer laser catheters available in the late 1990s (which had a tip with a diameter of 1.4 mm, 1.7 mm, or 2 mm), finding them too inflexible to navigate narrow arteries. So, in 1998, Dr. Rentrop contacted Spectranetics with an idea for a new .9 mm excimer laser catheter. Over the ensuing 20 months, Dr. Rentrop helped Spectranetics develop a prototype of the proposed .9 mm laser catheter. In 2000, Dr. Rentrop conducted an animal study with the device, followed by a clinical trial, and eventually obtained FDA approval.

During the development of the device, the parties disagreed as to Dr. Rentrop's compensation for his work. As a result of this, Dr. Rentrop filed a patent application on the invention. That application eventually issued as a patent, and Dr. Rentrop sued Spectranetics for infringement. Before the district court, Spectranetics raised defenses of improper inventorship, obviousness, noninfringement, and inequitable conduct. A jury found for Dr. Rentrop on inventorship, obviousness, and noninfringement and awarded Dr. Rentrop $500,000 in damages. After trial, Spectranetics filed a renewed motion for judgment as a matter of law on the issue of infringement, but not on obviousness. After the post-trial motions were fully briefed, the Supreme Court decided KSR, but Spectranetics did not raise the issue of obviousness before the district court. Approximately four months after KSR was decided, the district court denied the motion for judgment as a matter of law on infringement and found for Dr. Rentrop on inequitable conduct. Spectranetics appealed.

The Federal Circuit affirmed. Turning first to the issue of obviousness, the court noted Spectranetics did not file a post-verdict motion for judgment as a matter of law, precluding a direct attack on the verdict. Spectranetics argued the intervening KSR decision permitted the court to address the issue even though it had not been raised with the district court. The Federal Circuit rejected this argument, noting the four month lapse between when KSR was decided and when the district court entered final judgment. As a result, the court held Spectranetics could have raised the issue with the district court in the first instance and refused to consider the issue on appeal. Further, the court observed the district court's jury instructions on obviousness were not contrary to KSR in any event.

The issue of infringement hinged on the construction of the term "tip" in the claims. The claims require "a tip extending from the catheter shaft," and that the catheter shaft be "stiffer and less flexible than the tip" of the device. The district court construed "tip" to mean "that which serves as the end, cap or point of an object." Here, Spectranetics' products had a hard glue and platinum band at the very end, which was stiffer than the catheter shaft. It was this glue and platinum portion that Spectranetics contended was the "tip." Dr. Rentrop's expert witness testified that this portion is only present so the catheter appears on an imaging device, and was not the entire tip. Spectranetics attacked this testimony on the grounds it was contrary to the district court's construction, but the Federal Circuit held it was sufficient for the jury to return a verdict of infringement, and there was therefore no clear error.

Finally, the Federal Circuit quickly disposed of the inequitable conduct allegations. The court noted the district court found only a weak inference of intent to deceive with regard to one alleged failure to disclose and that nondisclosure was not highly material. The district court further held Dr. Rentrop's testimony was "credible in all material respects." Accordingly, the Federal Circuit held there was insufficient evidence to warrant reversal on the issue of inequitable conduct as well.

As a result, the Federal Circuit affirmed the district court's judgment in all respects.

To read the full decision in Rentrop v. Spectranetics Corp., click here.

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