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Irreparable harm to exclusive licensee cannot support injunction; willfulness vacated post-Seagate
August 20, 2008

In a decision Monday, the Federal Circuit addressed a range of issues and ultimately affirmed a district court's denial of injunctive relief and, in light of the intervening Seagate decision, vacated and remanded the case for reconsideration regarding willfulness. The court also affirmed the district court's finding of no invalidity and the infringement of some claims under the doctrine of equivalents.

Regarding the denial of an injunction, the Federal Circuit agreed with the district court that because the only irreparable harm alleged was to the plaintiff's exclusive licensee, rather than the plaintiff, there was no pertinent evidence of irreparable harm to support granting an injunction. Regarding willfulness, the court determined that the district court's jury instruction (based on the Underwater Devices affirmative duty of care standard) was not correct under the Seagate "objective recklessness" standard. The court held that the improper instruction was not harmless error and remanded the issue to the district court for further consideration as to whether the defendant's conduct was sufficiently reckless to be considered willful.

More on Voda v. Cordis Corp. after the jump.

The case involved a host of issues including claim construction, patent validity, infringement under the doctrine of equivalents, prosecution history estoppel, willfulness, and denial of a permanent injunction. The technology relates to catheters used in interventional cardiology. These catheters are inserted into the femoral artery and are then advanced until they near the opening of the coronary artery (called the "coronary ostium"). A portion of the catheter rests against the opposing aortic wall to provide support for the catheter. This is illustrated in the figure below:

Figure 8d

Before the patents-in-suit issued, Cordis modified its design in an attempt to avoid infringement by using a curved, rather than substantially straight contact area. Voda believed that the redesigned catheters infringed and filed suit. A jury determined that the patents were valid and infringed and that the infringement was willful. Cordis moved for judgment as a matter of law post-trial, was denied, and then filed this appeal.

The Federal Circuit first handled an issue of claim construction, holding the claims, specification, and prosecution history all supported the district court's claim construction, which included catheters with curved contact areas between the aorta and the catheter. The court also briefly considered the obviousness and anticipation issues raised, holding there was substantial evidence for a reasonable jury to conclude that the claims were not invalid.

The court next examined whether the finding of infringement under the doctrine of equivalents was supportable. The jury found the claims requiring a "second straight portion" or a "substantially straight leg" (relevant to how the catheter contacts the aortic wall to provide support) were infringed by Cordis' curved catheter. Cordis argued that infringement under the doctrine of equivalents was unavailable for one of the three patents, because the relevant limitation was added during prosecution. The court agreed, noting that because of the amendment, the doctrine of equivalents was presumptively unavailable for this limitation, and Voda offered no argument to overcome this presumption. As a result, the finding of infringement of these claims under the doctrine of equivalents was reversed.

Regarding the other two patents, however, the court affirmed the finding of infringement. With these patents, there was no amendment, and hence no prosecution history estoppel. Further, the court held there was substantial evidence presented that the differences between the limitation and Cordis' curved catheter were insubstantial, including specific testimony by Voda's expert that not only did cardiologists have difficulty distinguishing between the two during use, but also that they met the familiar "function-way-result" test for a finding of infringement under the doctrine of equivalents. Because there was substantial evidence to support a conclusion of infringement under the doctrine of equivalents, the court affirmed the finding of infringement on this basis.

The court then turned to willfulness. The district court instructed the jury that "[w]hen a person becomes aware that a patent may have relevance to his or her activities, that person has a duty to exercise due care and to investigate whether or not his or her activities or proposed activities infringe any valid, enforceable claim of the patent." Both parties agreed that this instruction was in error under Seagate. Voda argued that the instruction was harmless because the evidence showed that Cordis's XB catheters were intentional copies of the Voda catheters. Because Voda had admitted that Cordis had redesigned the catheters in order to avoid infringing and Cordis had obtained multiple opinions from counsel regarding infringement, the court found that "a jury instruction in accord with the Seagate objective recklessness standard may have changed the result of the jury verdict on willfulness." As a result, the court remanded the issue of willfulness to the district court.

Finally, the court considered the district court's denial of a permanent injunction. Under the Supreme Court's eBay decision, a plaintiff seeking a permanent injunction must show 1) it suffered irreparable injury, 2) remedies at law are inadequate to compensate the injury, 3) the balance of hardships warrant a remedy in equity, and 4) public interest is not disserved by the injunction. In this case the district court held that, Voda had not shown irreparable injury and that monetary damages were inadequate. Instead, the only irreparable harm Voda alleged was to its exclusive licensee, who was not a party to the case. As a result, the court affirmed the denial of a permanent injunction.

To read the full decision in Voda v. Cordis Corp., click here.

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