# Petition for Writ of Certiorari — Cordis Corp. v. Boston Scientific Corp (No. 09-365) > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_1037%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 2009 ## Text fi) Supreme Con, Us. 09-365 SEP 24 9009 No. 09- OFFICE OF THE CLES IN THE Supreme Court of the United States CORDIS CORPORATION, Petitioner, v. BOSTON SCIENTIFIC CORP and BOSTON SCIENT On PETITION FOR A WE IFIC SCIMED, INC., Respondents. tIT OF CERTIORARI TO THE UnN(tTEpD StTaTES Court OF APPEALS FOR THE FEDERAL CIRCUIT PETITION FOR A WRIT OF CERTIORARI Of Counsel: CONSTANTINE L. TRELA, JR. SipLeY AUSTIN LLP One South Dearborn Street Chicago, IL 60603 (312) 853-7000 GREGORY L. DISKANT Counsel of Record EUGENE M. GELERNTER SEAN MARSHALL PATTERSON BELKNAP WEBB & TYLER LLP 1133 Avenue of the Americas New York, NY 10036 (212) 336-2000 Attorneys for Petitioners QUESTION PRESENTED In a patent infringement case, ts it proper to apply the doctrine of equivalents to cover a product that is outside the literal scope of the asserted patent claim where the allegedly equivalent feature was known to persons skilled in the art and known to the inventor at the time of patenting as a substitute for a limitation of the patent claim and the inventor could have drafted and applied for patent claims that cover products with the allegedly equivalent feature, but did not do ‘$0? PARTIES TO THE PROCEEDING Pursuant to Rule 14.1(b), the parties here and in the proceeding in the U.S. Court of Appeals for the Federal Circuit are listed. Petitioner here and appellant in the court below is Cordis Corporation. Respondents here and appellees below are Boston Scientific Corporation and Boston Scientific Scimed, Inc. RULE 29.6 CORPORATE DISCLOSURE STATEMENT Johnson & Johnson is the parent company of Cordis Corporation. Johnson & Johnson is a publicly held corporation and owns 10 percent or more of the stock of Cordis Corporation. No other corporation or publicly held company owns 10 percent or more of the stock of Cordis Corporation. ee ee — eR la TABLE OF CONTENTS Page QUESTION PRESENTED des Sada in asAdieh SLEPT ee PAR CICS FC) THE PROC UIINVGS cisicsccscssvcccetesnassarsesncossses il RULE 29.6 CORPORATE DISCLOSURE EPA © ERIE viisekeaynissssicinsdaseesiien amulets nena il PETITION FOR WRIT OF CERTIORARI ...................0sc0000: ] eee I es itins eens een 2 Fe a BHI sicsaccsesocscecdsiassigegcasenter ones eee 2 STATUTORY PROVISIONS INVOLVED. ............c0.s00000 Re STATE OIE C OF Tite Ce cikitinssssststsrcccearncomnnens 3 A. FRPOCAIOOTY TOMNDIIOINE occ cciccssicscessseconcvsscocsiccnseeres 3 B. The Technology at Issue in This Case................. 7 C. The Existing State of Mie Alt...........cccercessscssses coe D. The Invention that is Described and CEAIGS OE TG WEE FFI ins cx issn csesassesescsvinsincress 9 Ee. «= FR PE TION soisicivcckseeieecce siesta 12 F. District Court Proceedings...............cccccssessssssesse He :. SE Diiticsccacccicnceabiivoleausemanace en 12 2 Cordis's Renewed Motion FE Fes sc ssicscsdencrsavsussiercaeieaunucnue 13 G. Cordis's Appeal to the Federal Circuit............... 13 REASONS FOR GRANTING THE PETITION ................. 15 tl TABLE OF CONTENTS (continued) Page I. There is a Need for Clarity on When the DOE Should Apply to Known Substitutes FOR CI Fe oi idisniss vecevecncsrecseuateisceress ikigeeatnacness 15 1. This Court's Decisions Are in Tension .................60008 17 Pi, FRR CUTS ETE COO I aise cise cscicsscrsessccencens ee B. PN IIR isos ciidarsckiccsaesssecarss stomata 19 Gy. © PPR as.vanvecdabesinkeecioussoaiumiveresdernin aise viwmcteeniet 20 (11. Federal Circuit Law is Inconsistent ....................0ccc00e 21 A. Cases Holding that the DOE May Not Be Applied to Cover Substitutes that the Inventor Knew of, But Did FG ON sails fends dct ca teaniateesanersaiccaaciencoarss 22 B. Cases Applying the DOE to Structures that Were Known But Not Claimed .................. 24 C. Resolving these Conflicting Lines of Authority Would Provide Needed Clarity to Patentees and the Public.................... 26 IV. This Case is an Excellent Vehicle for Resolving ON TN oo iret cariscasccakess ueeeneieets Sridicsn can eae aaa 26 Gs Be N avcpeecidcacsecanvencninennsies uchiareuecioseeornepecines sae INDEX TO APPENDICES APPENDIX A: Opinion of the U.S. Court of Appeals for the Federal Circuit, reported at eo SL ae a Ae. | la TABLE OF CONTENTS (continued) Page APPENDIX B: Order of the U.S. District Court for the District of Delaware, filed on Miay 11, 2006 (UNTO POTted).....6...00:02se0sscececeseeees saadevansauktashane 37a APPENDIX C: Memorandum Order of the U.S. District Court for the District of Delaware, filed on September 24, 2007 (unreported) ................:eeee 39a APPENDIX D: Opinion of the U.S. District Court for the District of Delaware, filed on BF hg re Se Eis ci cnccventcsevecscnvaceanssessvesveeserstesea 47a APPENDIX E: Order of the U.S. Court of Appeals for the Federal Circuit denying rehearing and rehearing en banc, filed June 26, 2009 (unreported)............... EE. TABLE OF AUTHORITIES Page CASES Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405 (1908) ...0. 6, 16 Corning Glass Works v. Sumitomo Elec U.S.A., Inc., 868 F.2d 1251 (Fed. Cir. 1989)............es000 16 Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009) ................. 25 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003)........ pe aniaeraccaly sevvesenes ESE Festo Corp. v. Shoketsu Kinzoku Kogyo ee CAS. SSS 6), FAS CAE) crecccescccscveccceness passim Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318 (Fed. Cir. 2000)...... ete ae ee Freedman Seating Co. vy. American Seating Co., 420 F.3d 1350 (Fed. Cir. 2005)............c0ss0000089, 13, 14, 23 Fuller v. Yentzer, NN cli ncs ccs apis shnnsonnsdauananatinneeeieneens 4,18 General Electric Co. v. Wabash Appliance Cs See Gos SO 8 PUD vavnessinisensdsccsinsenssss 6, 15, 16,17 ee er ee Gis © CETTE cauacesccccticcisicessscreecssacccscnares 4,18 Glaxo Wellcome, Inc. v. Impax Labhs., Inc., 356 F.3d 1348 (Fed. Cir. 2004) ree 24 Goold v. Rees, 62 U.S. 187 (1872) ..cccccscrccvcccsseccscsesees 4, 17, 19 Vi et — at — , ee = ie ee TABLE OF AUTHORITIES (continued) Page Graver Tank & Mfg. Co. v. Linde Air PROS. GH g SIF Cis Cel Ca vi vccesssncecdeccecenscesseessencss 19 Halliburton Oil Well Cementing Co. v BU Ct 8 BE a cs Sainhcnsosscveonssactioceiincensd 4,19 Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371 EPRI, MEI INE Bas iniccscccanasscnadensatptosavensorss leseuacdsnuctuaaaumnce 25 Lifescan, Inc. v. Home Diagnostics, Inc., Fe ee Be re Cte BE tdatstetivnxticcse constrict ae Markman v. Westview Instruments, Inc., 2 BE Fi ET McClain v. Ortmayer, Bee Wee PE CSE DP cess serachcsscevcoveencsice RAR Re AA 16, 17 Merrill v. Yeomans, OF I css nse cag Cogn sbncdagxanneteuesobeneuariales 7, 50 Overhead Door Corp. v. Chamberlain Group, Inc., 194 F.3d 1261 ge RE Be RRSP OS AA ROR EE Pa aE re 6, 24, 25 Sage Products, Inc. v. Devon Indus., Inc., SSO FF EGEe CE ORs Cae, TIFT) oscsssnscccessssscccscsssvecses passim United Carbon Co. v. Binney & Smith Co., BF ee, ee FEED ioodentntsdavednnesacnntevaccchactsdsicsveorns 6-7, 15 In re Vamco Machine & Tool, Inc., Fe ce Ce Cr, 0, ois citskci sens cncenicccecces 16 Warner-Jenkinson Co. v. Hilton-Davis Chem. Co., 520 U.S. 17 (1997).................... 14, 17, 19, 20 Vil TABLE OF AUTHORITIES (continued) STATUTES 35 U.S.C. § 112,92 2,3, 6, 16 35 U.S.C. § 271 (a) . 28 U.S.C. § 1254(1) 2 IN THE SUPREME COURT OF THE UNITED STATES CORDIS CORPORATION, Petitioner, Vv. BOSTON SCIENTIFIC CORPORATION AND BOSTON SCIENTIFIC SCIMED, INC., Respondents. ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT Petitioner Cordis Corporation ("Cordis") respectfully petitions for a writ of certiorari to review the decision of the U.S. Court of Appeals for the federal Circuit in favor of Boston Scientific Corp. and Boston Scientific Scimed, Inc. (collectively, "BSC"), holding that Cordis's BX Velocity and Cypher stents infringe claim 36 of U S. Patent No. 5,922,021 to David Jang under the doctrine of equivalents. The Federal Circuit affirmed the district court's judgment of infringement, and rejected a challenge to the applicability of the doctrine of equivalents in this case. , OPINIONS BELOW The opinion of the court of appeals (App., infra, |a- 36a) is reported at 561 F.3d 1319. The order of the court of appeals denying Petitioner's petition for rehearing and rehearing en bane (App. 98a-100a) is unreported. The district court's post-trial orders are at App. 37a-38a and App 39a-46a, and its memorandum opinion is at App. 47a-97a. JURISDICTION lhe court of appeals entered judgment on March 31, 2009. App. la. A timely combined petition for rehearing and rehearing en banc was denied on June 26, 2009. App. 98a-100a. This Court has jurisdiction pursuant to 28 U.S.C. § 1254(1). STATUTORY PROVISIONS INVOLVED Section 112,92 of the patent statute, 35 U.S.C. § 112, { 2, states: The specification [of a patent] shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Section 271](a) of the patent statute, 35 U.S.C. § 271(a), states: Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent STATEMENT OF THE CASE A. Introductory Statement [his case presents an important issue on which this Court's decisions are in tension and Federal Circuit precedent is contradictory. The issue is whether the doctrine of equivalents ("DOE") may be applied in patent cases to cover a product with a feature that was known at the time of patenting to the inventor and to other persons skilled in the art as a substitute for a limitation of the patent's clatms, where the inventor could have drafted claims that would literally have covered products with the allegedly equivalent feature, but did not do so. This issue is important because, while the patent statute requires a patent applicant to "distinctly claim[ | the subject matter which the applicant regards as his invention," 35 U.S.C. § 112,42, the DOE expands those claims and creates uncertainty about the scope of patent protection. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 732 (2002). That uncertainty is heightened where, as here, the law is inconsistent and unclear. In such circumstances, it becomes all the more "difficult to determine what ts, or is not, an equivalent to a particular element of an invention.” /d. This heightened uncertainty can impede legitimate competition, with unfortunate consequences for the public. "If competitors cannot be certain about a patent's extent, they may be deterred from engaging in legitimate manufactures outside its limits, or they may invest by mistake in competing products that the patent secures. " /d At bottom, this case raises a question of great importance: Where the patentee and those of skill in the art know that a particular feature not claimed in the patent is 4 interchangeable with one that the patentee has distinctly claimed, may the patentee iater in litigation expand the scope of the patent under the DOE to cncompass that unclaimed feature, or may the public rely on the fact that the feature is unclaimed in order to develop useful devices? One answer grants the patentee greater patent protection than he claimed, while leaving the public uncertain about the scope of the patent; the other favors competition and limits the patent's scope to what the patentee actually described in his claims. Prior decisions of this Court do not answer this question. Ln nineteenth century cases and continuing into the middle of the twentieth century, this Court treated the DOE as applicable for features that were known at the time of patenting as interchangeable substitutes for an element that is described in the patent claim, while explicitly stating that the DOE is not applicable for substitutes that were unforeseeable or not known as interchangeable at the time the patent issued. See, e.g., Gould v. Rees, 82 U.S. 187, 193 (1872); Fuller v. Yentzer, 94 U.S. 299, 300 (1876); Gill v. Wells, 89 U.S. 1, 13 (1874); Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 13 (1946). However, recognizing important changes in the law, this Court effectively reversed course in its 2002 decision in Festo, 535 US. 722, and placed the burden of precision in language on ihe patentee. In Festo, this Court reasoned that "It]he patentee, as the author of the claim language, may be expected to draft claims encompassing already known equivalents." /d at 740; see also id. at 741 ("The patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent."). Thus, unlike Gou/d and related cases, Festo holds that there is no reason to allow the DOE to encompass interchangeable substitutes known at the time the patent claim was drafted. Meanwhile, also unlike Gould and related 5 cases, /esto accepts the proposition that the DOE can be extended to equivalents that were unforeseeable at the time of patenting, but that are shown to be equivalent at the time of infringement. 535 U.S. at 740-41. Festo addresses only claim clements that were narrowed by amendment during prosecution of a patent application. However, its logic applies with equal force for claim elements that were not amended. For both amended and un-amended claim elements, "[t}he patentee, as the author of the claim language, may be expected to draft claims encompassing already known equivalents." Jd. at 740. Although this Court has not had occasion to consider whether Festo's logic applies to unamended claim elements, the Federal Circuit has developed two contradictory lines of precedent on the issue. Consistent with Festo's reasoning, some Federal Circuit decisions place the onus on the patentee to draft patent claims that cover alternatives known at the time of patenting, foreclosing resort to the DOE for such features if the claims as drafted do not literally cover them. See Sage Products, Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997) ("as between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure."); Freedman Seating Co. v. American Seating Co., 420 F.3d 1350, 1360-62 (Fed. Cir. 2005). As these cases recognize, it is reasonable to expect patentees to draft claims that literally cover known alternatives if they consider those alternatives to be within the scope of their invention and want them to be within the scope of the patent. See Festo, 535 U.S. at 740. This is 6 especially true where there are no "shortcomings of language" that would have "prevented [the patentee] from describing the alleged equivalent when it [drafted] the claim." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1370 (Fed. Cir. 2003). Other Federal Circuit decisions follow the opposite approach, based on the earlier cases from this Court. They place the onus on the public to predict whether an unclaimed feature that was known at the time of patenting to be interchangeable with an element of the claim, but that was not claimed, will later be treated as an equivalent of the claim element under the DOE. See, e.g, Overhead Door Corp. v. Chamberlain Group, Inc., 194 F.3d 1261, 1270 (Fed. Cur. 1999); Lifescan, Inc. v. Home Diagnostics, Inc., 76 F.3d 358, 362 (Fed. Cir. 1996). Resolving the conflicting lines of Federal Circuit precedent on this issue is a matter of considerable importance. In our claims-based patent system, "[t]he claims ‘measure the invention." General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938), quoting Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419 (1908). The DOE extends the patent grant beyond what the inventor has "distinctly claim[ed] [as] the subject matter ... [of] his invention" under § 112, $2, to encompass substantial equivalents that are not described in the patent claims. As a result, the DOE "renders the scope of patents less certain," Festo, 535 U.S. at 732, because "[i]t may be difficult to determine what is, or is not, an equivalent to a particular element of an invention." /d. This uncertainty can redound to the public's detriment. "A zone of uncertainty which enterprise and experimentation may enter only at the risk of infnngement claims would discourage invention only a little less than unequivocal foreclosure of the field." United 7 Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942). This "zone of uncertainty" is enlarged where there are contradictory lines of precedent on how the DOE should be applied. Reducing that uncertainty will benefit both the public and patentees by avoiding unnecessary disputes about the scope of patent protection while promoting legitimate competition. See Festo, 535 U.S. at 732; Markman y. Westview Instruments, Inc., 517 U.S. 370, 390 (1996); Merrill v. Yeomans, 94 U.S. 568, 573-74 (1876). B. The Technology at Issue in This Case The technology in this case involves coronary stents, which cardiologists use for treating coronary artery disease. Coronary artery disease involves the narrowing of the coronary arteries, which restricts or blocks the flow of blood to the heart. This can lead to serious consequences, including a heart attack or death. Stents are small, cylindrical, lattice-like structures. Generally, they are made of metal. They are implanted in the coronary arteries to maintain an open passageway in the artery for the flow of blood. Unlike open-heart surgery, the implantation of a stent is a minimally invasive procedure. Typically, the physician makes a small incision in the patient's groin and then inserts and delivers the stent on a balloon catheter through the patient's vascular system to a portion of a coronary artery that has been narrowed by disease. Once the stent reaches the desired location in a diseased artery, the physician expands the balloon on which the stent has been mounted. Expansion of the balloon expands the stent to a desired diameter. The balloon is then deflated and withdrawn. The stent stays in 8 place in the artery and keeps its expanded diameter to maintain an open passageway for the flow of blood. _ fe The Existing State of the Art In this case, BSC has accused Cordis of infringing U.S. Patent No. 5,922,021 to David Jang (the '"'021 patent"). The '021 patent issued from an application that Dr. Jang filed with the Patent Office on April 25, 1997. The '021 patent claims the benefit of the earlier filing date of a provisional application that he filed on April 26, 1996. By April 1996, stent technology was a crowded field. Stents already were standard treatment for coronary artery disease, and the basic principles of stent design were well established. Known stents typically combined two basic building blocks: (1) zig-zag rings that expand in diameter to keep the artery open for the flow of blood; and (2) connectors that link adjacent rings and provide flexibility so that the stent can readily be delivered through curved arteries. There were known variations for the zig-zag rings and for the configuration of the connectors. In particular, there were two known alternatives for the shape of the zig-zag rings. They could have angular corners (as in U.S. Patent No. 5,102,417 to Palmaz) or semicircular arcs and no comers (as in WO 96/03092 to Israel et al.). a | | ———/\ —\ / Ip —— {3 yee WO 96/03092 to Israel et al., Fig. 7 | ee 100 U.S. Patent No. 5,102,417 to Palmaz, Fig. 7 _ a | Whether to use rings with or without corners was a matter of design choice. Both alternatives were known to the inventor. D. The Invention that is Described and Claimed in the '021 Patent The specification of the ‘021 patent describes and depicts various stent designs. All of those embodiments have zig-zag rings and al! of the zig-zag rings have angular corners. £.g.: '021 Patent, Fig. 10D | ‘021 Patent, Fig. 2B In some embodiments, the corners form right angles. E.g., ‘021 patent at col. 15, lines 49-55 ("[i]n the design of FIGS. 10D and 10E" the "[jJoining struts 30 are at right angles to the expansion struts 28 they connect.") (emphasis 10 added). In the other embodiments, the corners form acute and obtuse angles. £.g., ‘021 patent at col. 6, line 66 — col. 7, line 3 ("Referring now to FIGS. 2A and 2B, joining struts 30 of stent 10 are seen to extend at an angle to the expansion struts 28, forming a narrow [i.e., acute] angle 48 with one expansion strut 28 ... and a wide [i.e., obtuse] angle 50 with the other expansion strut 28 of an expansion strut pair 32.") (emphasis added). Although zig-zag rings with circular arcs were known in the art as an alternative to zig-zag rings with angular corners, the '02] patent does not describe or depict any embodiment that has circular arcs instead of corners. Meanwhile, the patent specification makes clear that the inventor knew that rings with circular arcs could be used as a substitute for rings with corners. In the section of the patent specification entitled "Background of the Invention," the inventor cited two examples of “conventional stents" that were known 1n the art. One of these examples was U.S. Patent No. 5,102,417, shown on the left below, which had Zig-zay rings with angular corners. The other example was WO 96/03092, the so-called "Brun patent,” shown on the right below, which had zig-zag rings in the shape of circular arcs with no corners: 1] Although the inventor was aware that a stent's zig-zag rings could either have angular corners or circular arcs and no comers, he viewed corners as desirable and thus chose to make "comers" an explicit requirement of claim 36.' Angular corners and circular arcs have different expansion characteristics and provide different places for attachment of other stent components. For purposes of his invention, Jang preferred angular corners. Claim 36 was the only patent claim that BSC asserted against Cordis in this case. Claim 36 (and claim 23 trom which it depends) requires sixteen "corners." Consistent with this Court's decision in Markman, 517 U.S. 370, the district court construed the term "corner" prior to tral, as meaning the "place where two surfaces meet to form an angle." \Vhe "corner" limitation, as construed by the district court, thus describes the stents that are described and depicted in the specification of the '021 patent, in which the zig-zag rings have the angular shape of corners. The term "corner" does not describe the other known alternative — i.e., stents in which the zig-zag rings have semicircular arcs and no corners. Thus, stents without corners, as known in the art, are not within the literal scope of claims 23 and 36 and do not literally infringe those claims. If the inventor had wanted these claims to cover stents without corners, it would have been casy cnough for him to have drafted them with that scope. In fact, the inventor did precisely that for claims 1-22 of the '021 patent. 5 Claims 1-22 do not include the “corners” limitation, and thus are broad enough to cover both alternatives that were known Claim 36 is a dependent claim, that 1s, 1t depends from — and incorporates the limitations of — claim 23. Claim 23, in turn, includes explicit claim limitations requiring that zig-zag rings (or "expansion columns") have expansion struts that are coupled to joining struts at "corners." See col. 20, lines 5-23 and lines 42-60 }2 in the art, ie, stents with and without corners. Asserted claim 36, however, 1s drafted in a narrower manner, as limited to stents with "corners." E. The Accused Devices In this case, BSC alleged that Cordis's BX Velocity and Cypher stents infringe one claim of the '021 patent claim 36. BSC admits that Cordis's stents do not infringe other claims of the ‘021 patent, such as claim 1, that lack the "corners" limitation. The Cordis stents share the same design, as shown on the right. Both have zig-zag rings (or "expansion columns") made up of "expansion strut pairs" in which expansion struts (shown in red) are coupled to joining struts (shown in blue). The joining struts have the shape of semicircular arcs. The semicircular arcs do not form angular "corners" where they meet the expansion struts. KF. District Court Proceedings F The Trial In order to prove literal infringement, BSC needed to show by a preponderance of the evidence that Cordis's stents have every limitation or requirement of claim 36 under the district court's claim construction. Thus, BSC needed to show, inter alia, that the expansion struts in Cordis's stents are coupled to the joining struts at "corners," /.e., "place[s] where two surfaces meet to form an angle." The jury found that BSC failed to make this showing and returned a verdict that Cordis's stents do not literally infringe claim 36 13 Although the jury found no literal infringement, it nonetheless concluded that Cordis's stents infringe the "corners" limitation under the DOE. , Fe Cordis's Renewed Motion for JMOL After the tnal, Cordis renewed its earlier motion for judgment as a matter of law (JMOL) that its stents do not infringe the "corners" limitation under the DOE. Cordis explained, as described above, that stents with and without corners both were known in the art. Cordis further demonstrated that the inventor was aware of both types of stents when he applied for the '021 patent and noncthceless chose to limit claim 36 to stents with "corners." Under these circumstances, Cordis argued, the patentee cannot contend that the claim covers known but unclaimed alternatives under the DOE. The district court denied Cordis's motion without addressing Cordis's argument that the DOE could not be applied to cover an unclaimed alternative when the inventor and those in the field were well aware of that alternative at the time of patenting. G. Cordis's Appeal to the Federal Circuit As it had done in the district court, Cordis relied on Freedman Seating, 420 F.3d at 1360-62, and Sage Products, 126 F.3d at 1425, which hold that where two alternatives are known in the art and known to the inventor at the time of patenting, and the inventor nonctheless drafted his claim so as to limit it to one of those known alternatives, the patentee cannot later rely on the DOE to cover the other known alternative. Thus, Cordis argued on appeal that "[w]ith both types of stents known in the art and known to the inventor, '{[a] skilled patent drafter would foresee the limiting potential of the ['corners'] limitation’ and could have drafied a claim 14 without the "corners" limitation if he ‘desired broad[er] patent protection.” (quoting Freedman Seating, 420 F.3d at 1360, which in turn quotes Sage Products, 126 F.3d at 1425). Cordis argued that "in assessing the bounds of the claim," competitors "were 'justified'" in relying on the fact that the inventor was aware of both alternatives but limited claim 36 to stents with "corners." The Federal Circuit affirmed the judgment of infringement under the DOE. In doing so, it did not attempt to distinguish this case from its contrary decisions in Freedman Seating, 420 F.3d at 1360-62, and Sage, 126 F.3d at 1425. It focused instead on a different argument made by Cordis — that application of the DOE in this case vitiated the "corners" requirement — and it rejected that argument (A 17a): Although we have "refused to apply the doctrine [of equivalents] ... where the accused device contained the antithesis of the claimed structure," ... the circular arcs of [Cordis's stents] are not antithetical to the "corners" limitation in claim 36 of the '021 patent. Boston Scientific's theory that the circular arcs [of Cordis's stents] are equivalent to the "corners" in claim 36 does not vitiate the "corners" limitation, because it does not "render| | the pertinent limitation meaningless," Freedman Seating Co. v. Am Seating Co., 420 F.3d 1350, 1359 (Fed. Cir. 2005), or "effectively eliminate that element in its entirety," Warner-Jenkinson, 520 U.S. at 29. lhe Federal Circuit did not explain why this case warrants a result different from Freedman Seating and Sage, which hold that the DOE is inapplicable in the circumstances presented here. 15 REASONS FOR GRANTING THE PETITION I. There is a Need for Clarity on When the DOE Should Apply to Known Substitutes for a Claim Element More than a century ago, this Court stated that "nothing can be more just and fair, both to the patentee and to the public, than that the former should understand, and correctly describe, just what he has invented and for what he claims a patent." Merrill v. Yeomans, 94 U.S. 568, 573-74 (1876). Clarity as to "[t]he limits of patent protection" is important, both "for the protection of the patentee" and to avoid chilling competitive activities by others. Markman y. Westview Instruments, Inc., 517 U.S. 370, 390 (1996), quoting General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938). In particular, there is a strong interest in a clear demarcation of the boundary that separates the products that are covered by a particular patent (which may not be used without the inventor's permission) from those not covered by the patent (which the public may freely use). Otherwise, a “zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than foreclosure of the field," United Carbon Co. v Binney & Smith Co., 317 U.S. 228, 236, 63 S. Ct. 165, 170, 87 L.Ed. 232 (1942), and "[t]he public [would] be deprived of rights supposed to belong to it, without being clearly told what it is that limits these rights." Merrill v Yeomans, 93 U.S. 568, 573, 24 L.Ed. 235 (1877). 16 Markman, 517 U.S. at 390. In this regard, "[i]t has long been understood that a patent must describe the exact scope of an invention and its manufacture" in order to "secure to [the patentee] all to which he is entitled, [and] to apprise the public of what is still open to them." /d at 373, quoting McClain v. Ortmayer, 141 U.S. 419, 424 (1891). To provide clarity on these issues, § 112, 42 of the patent statute, 35 U.S.C. § 112, 42, requires that a patent conclude with one or more claims, "particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” “The claims ‘measure the invention."" General Electric Co. v. Wabash Appliance Co., 304 U.S. 364, 369 (1938), quoting Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419 (1908). Much as a deed defines the boundaries of real property, /n re Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 n.5 (Fed. Cir. 1985), the claims of a patent define the "metes and bounds" of the patent's scope. Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). The DOE "remain{s] a firmly entrenched part of the settled rights protected by the patent," Festo Corp. vy. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002), and extends patent protection beyond what the inventor has "distinctly claim[ed]" as the subject matter of the invention under § 112,42. In doing so, the DOE "blurs the line of demarcation between infringing and non- infringing activity," and "creates a zone of uncertainty” that may lead to "foreclosure of competitive activity within the penumbra of each issued patent claim." Sage Prods., Inc. vy. Devon Indus., Inc., 126 F.3d 1420, 1425 (1997). As this Court explained in ‘esto, "the doctrine of equivalents renders the scope of patents less certain" because "{ift may be difficult to determine what is, or is not, an 17 equivalent to a particular element of an invention.” 535 U.S. at 732. And "li]f competitors cannot be certain about a patent's extent, they may be deterred from engaging in legitimate manufactures outside its limits, or they may invest by mistake in competing products that the patent secures." Id.; see also Warner-Jenkinson, 520 U.S. at 29 ("There can be no denying that the doctrine of equivalents, when applied broadly, conflicts with the definitional and public-notice functions of the statutory claiming requirement."). The potential for conflict between the DOE and the "definitional and public-notice functions of the statutory claiming requirement," id., 520 U.S. at 29, becomes all the more acute where, as here, there are contradictory lincs of precedent. The existence of contradictory Federal Circuit cases some holding that the DOE is inapplicable to structures that were known at the time of patenting as substitutes for the patented invention, and others reaching the opposite result — impedes the public's ability to determine whether a known interchangeable feature is available for use without restriction or will be treated as an equivalent under the DOE. There is a strong interest in minimizing this zone of uncertainty. Markman, 517 U.S. at 390; General Electric, 304 U.S. at 369; McClain, 141 U.S. at 424. II. This Court's Decisions Are in Tension A. This Court's Early Cases More than a century ago, in Gould v. Rees, 82 U.S. 187 (1872), this Court drew a sharp distinction for purposes of the DOE between interchangeable substitutes known at the time of patenting and those that were not known as interchangeable at the time of patenting. /nder the approach sct forth in Gould, the DOE applics in the former situation and is inapplicable in the latter 18 Thus, Gould stated that the DOE is applicable where the alleged equivalent was "well known at the date of the patent as a proper substitute for the [feature described in the claim] ...." /d. at 194 (emphasis added). Conversely, Gould stated that the DOE is not applicable where "the ingredient substituted for the [ingredient described in the claim] was a newly discovered one, or even an old one performing some new function, and was not known at the date of the plaintiff's patent, as a proper substitute for the ingredient withdrawn ...."" Id. at 193 (emphasis added). Other decisions took the same approach. In Gill v. Wells, 89 U.S. 1 (1874), this Court stated: [[]t is clear law that the substituted ingredient cannot be regarded as a legal equivalent, within the meaning of the Patent law, unless it performs substantially the same function as the ingredient withdrawn, and was well known as such an ingredient at the date of the original patent and as a proper substitute tor the ingredient which was included in the patented combination. /d. at 30 (emphasis added): see also Fuller v. Yentzer, 94 U.S. 299, 300 (1876) ("Modifications or alterations in an invention consisting in @ combination of old ingredients, which merely substitutes another old ingredient for one of the ingredients in the patented combination, is an infringement of the patent, if the substitute performs the same function and was well known at the date of the patent as a proper substitute tor the one omitted from the patented invention; but the rule is otherwise if the ingredient substituted is a new one, or performs a substantially different function, or was not known at the date of the patent as a proper substitute for the one omitted from the patent.") (emphasis added), 19 Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), followed the same approach when it stated that a party accused of infringement can defeat an allegation of infringement under the DOE by showing that the feature of the allegedly infringing device was "not known at the date of ... [the patent] as a proper substitute for the [claimed feature]" or was "actually invented after the date of the patent." /d. at 13. Likewise, Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (1950), implicitly accepted the rule of the nineteenth century cases. It described known interchangeability as an "important factor" for application of the DOE: An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was. Id. at 609. On the facts before it, Graver Tank upheld the application of the DOE in view of evidence of "disclosures of the prior art {that} made clear that manganese silicate was a useful ingredient in welding compositions." /d. at 612. B. Warner-Jenkinson Warner-Jenkinson Co. v. Hilton-Davis Chem. Co., 520 U.S. 17 (1997), was the first step in changing the analysis. This Court reaffirmed that "knowledge of the interchangeability between claimed and accused elements” is relevant in a DOE analysis "for what it tells the fact-finder about the similarities or differences between those elements." Id. at 37, citing Graver Tank, 339 US. at 609. 20 Whereas earlier cases had held that the DOE is not available for equivalents that become known after the patent issued, Warner-Jenkinson held that "the proper time for evaluating equivalency - and thus’ knowledge of interchangeability between elements — is at the time of infringement, not at the time the patent was issued." 520 U.S. at 37. Implicit in this analysis is an expansion of the scope of equivalents from this Court’s earlier cases. The earlier cases limited the DOE to features that were known to be interchangeable at the time of patenting. A fortiori, those features will (at least ordinarily) also be known to be interchangeable at the time of infringement. cc Festo Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), represents a fundamental shift in thinking on the DOE, away from the approach followed in earlier cases. Festo teased apart the two time periods implicitly embraced by Warner-Jenkinson, and reversed the nineteenth century mode of analyzing each period. Thus, it affirms the propriety under Warner-Jenkinson of basing a finding of equivalence on an interchangeable feature developed after the invention and not foreseeable to the patentee. But it calls into question the earlier rule permitting a patentee to forego claiming a known equivalent and later to assert the patent against a third-party who utilizes that known, and unclaimed, equivalent. Festo addresses situations in which the DOE is asserted for a claim element that was narrowed by an amendment during patent prosecution. The Federal Circuit had held that there is an absolute bar against asserting the DOE for claim elements that are so amended. In Festo, this Court rejected an "absolute bar" in favor of a more flexible 21 approach that treats such amendments as presumptively barring the application of the DOE. This Court held that a patentee can Overcome the presumption by demonstrating, inter alia, that the alleged equivalent was unforeseeable at the time the amended claim language was submitted to the Patent Office. To come within the scope of this "unforeseeability" exception, "[t]he patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent." Jd. at 741 (emphasis added). This approach is reasonable because "[t]he patentee, as the author of the claim language, may be expected to draft claims encompassing readily known equivalents." Id. at 740 (emphasis added). Although Festo by its terms applies only to claim elements that were narrowed by an amendment during patent prosecution, its logic is equally applicable to all claim limitations. For all claim limitations, it is _ perfectly reasonable to expect the patentee "to draft claims encompassing readily known equivalents," id., if the patentee considered them to be within "the subject matter of the invention." Any other result would have the perverse effect of foreclosing the application of the DOE for equivalents that were known as interchangeable when a claim limitation was amended, while leaving the DOE fully available for equivalents that were known as interchangeable at the time a claim was originally drafted. No logic or policy supports any such distinction. il. Federal Circuit Law is Inconsistent The tension in this Court's decisions is mirrored in two strands of Federal Circuit cases that reach inconsistent results on this issue. Supreme Court review would help in bringing clarity to this important issue. 22 A. Cases Holding that the DOE May Not Be Applied to Cover Substitutes that the Inventor Knew of, But Did Not Claim In some cases, both before and after Festo, the Federal Circuit has held that where the inventor chose to limit his claims to only one of two or more structures known at the time as interchangeable, then the public may justifiably rely on that choice in assessing the scope of patent protection. Under the reasoning of these cases, the patentee may not subsequently assert that other structures that were known at the time as interchangeable, which the inventor was aware of but chose not to claim, are within the scope of the patent under the DOE. For example, in Sage, 126 F.3d at 1425, the Federal Circuit explained that where substitutes are known in the art and known to the inventor at the time of patenting, "[a] skilled patent drafter would foresee the limiting potential" of drafting claims that are limited to only one of those known substitutes. In such circumstances, "[n]o subtlety of language or complexity of the technology, nor any subsequent change in the state of the art, such as later- developed technology, obfuscate[s} the significance of this limitation at the time of its incorporation into the claim." Thus, where more than one alternative design is known in the art, nothing prevents an inventor from applying for a patent that covers both known alternatives — if a patent with that scope is desired: "If Sage desired broad patent protection for any container that performed a function similar to its claimed container, it could have sought claims with fewer structural encumbrances." /d. If an inventor applies for a patent that covers known alternatives, the Patent Office then has the opportunity to "fulfill[ ] its statutory role in helping to ensure that exclusive nghts issue only to those ie who have, in fact, contributed something new, useful, and unobvious." /d. The Federal Circuit reasoned in Sage that inventors who choose not to apply for a patent that covers a known alternative should not be able to seck that scope of patent protection in a later infringement suit (id. ): Instead [of applying for a patent that would cover known alternatives], Sage left the PTO with manifestly limited claims that it now seeks to expand through the doctrine of equivalents. However, as between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure. Freedman Seating, 420 F.3d at 1362, applies the same reasoning: The patentees ... stated that they were aware of other types of four bar mechanisms. Yet, they chose to specifically limit the claims to slider-crank mechanisms vis-a-vis the "slidably mounted" moveable end limitation. Members of the public were therefore justified in relying on this specific language in assessing the bounds of the claim. Accordingly, we think that to now say the claims include other four bar mechanisms under the doctrine of equivalents would unjustly undermine the reasonable expectations of the public. 24 More recently, in Glaxo Wellcome, Inc. v. Impax Labs., Inc., 356 F.3d 1348 (Fed. Cir. 2004), a post-Festo opinion, the Federal Circuit rejected the view that Festo's holding should be limited to the failure to include known equivalents when making a narrowing amendment. "[R]ead in context, the Supreme Court in Festo neither excuses an applicant from failing to claim 'readily known equivalents’ at the time of application nor allows a patentee to rebut the Festo presumption by invoking its own failure to include a known equivalent in its original disclosure. Instead, the critical inquiry is whether [the patentee] could have foreseen sustained release agents for bupropion other than HPMC at the time of filing or amendment." Id. at 1355 (emphasis added). B. Cases Applying the DOE to Structures that Were Known But Not Claimed Other Federal Circuit cases, both before and after Festo, have taken the opposite approach. In these cases, the Federal Circuit has applied the DOE where the interchangeability of the alleged equivalent and the claim element was known at the time of time of patenting and nothing picvented the patentee from claiming the equivalent, if that had been intended. For example, the Federal Circuit retied on "known interchangeability" in Overhead Door Corp. v. Chamberlain Group, Inc., 194 F.3d 1261(Fed. Cir. 1999), in reversing a grant of summary judgement of noninfringement under the DOE. In that case, the patent claim included a limitation requiring a mechanical "memory selection switch." The device that was alleged to infringe did not have a mechanical switch as called for by the patent claim, and instead "select{ed] memory locations with a software program, not with a mechanical switch." /d at 1269. In reversing the grant of summary judgment of noninfringement, the Federal 2 Circuit stated that the art had long recognized software processes and hardware processes "“as_ interchangeable substitutes" and the decision of which to use was a "matter of design choice." /d. at 1269-70. Likewise, in Lifescan, Inc. v. Home Diagnostics, Inc., 76 F.3d 358 (Fed. Cir. 1996), the Federal Circuit remanded for further proceedings under the DOE, based evidence that the alleged infringer had "simply replaced the initial step of the [patented] process with a known _ interchangeable alternative" that was taught by the prior art. /d. at 362. It stated that the evidence that the "known interchangeable alternative” was taught by prior art pre-dating the patent could be viewed as "reinforcing [the patentee's] position that the processes are equivalent.” /d. Just this year, the Federal Circuit relied on "evidence tending to show that conical and spherical surfaces are interchangeable" in assessing the objective reasonableness of the plaintiffs assertion of infringement under the DOE. Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1336 (Fed. Cir. 2009). The evidence demonstrated that this interchangeability was known before filing of the patent-in-suit. Jd. at 1337; see also Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1383 (Fed. Cir. 2001) ("testimony that the claimed [structure] and [the allegedly equivalent structure} are ‘interchangeable alternatives’ is substantial evidence supporting equivalence."); Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1324 (Fed. Cir. 2000) (‘That an element of an accused device already existed does not bar equivalency as to that element."). This line of Federal Circuit cased ignores the change in the law wrought by Festo and relies instead on this Court's nineteenth century cases. It culminates in this case, where the Federal Circuit affirmed a finding of infringement under 26 the DOE notwithstanding the jury's unchallenged finding that the accused stents did not have the angular "corners" literally required by claim 36 and notwithstanding undisputed evidence that the circular arcs were known in the art and known to the inventor at the time of the patent as an alternative to angular "corners." c. Resolving these Conflicting Lines of Authority Would Provide Needed Clarity to Patentees and the Public Resolving these conflicting lines of Federal Circuit precedent is important because, as the Federal Circuit has recognized, "the doctrine of equivalents blurs the line of demarcation between infringing and non-infringing activity," and thus "creates a zone of uncertainty, into which competitors tread only at their peril," leading to possible "foreclosure of competitive activity within the penumbra of each issued patent claim." Sage, 126 F.3d at 1425. Allowing this conflict in Federal Circuit decisions to continue unresolved only expands this "zone of uncertainty." Jd. Providing clarity on these issues would serve the interests of patentees and the public, reduce the number of patent disputes and promote legitimate competitive activity. IV. This Case is an Excellent Vehicle for Resolving the Issue This case presents the relevant issue in its starkest form. The key facts are undisputed. Stents having zig-zag rings with the claimed angular "corners" and the alleged equivalent — rings with circular arcs and no "corners" — were known in the art at the time the patent issued as alternative designs. Stents having both alternatives were sold by medical device manufacturers and used by cardiologists. Both alternatives were taught in prior art patents. 27 These design alternatives were not merely known in the art — they were known to the inventor. When the inventor described earlier stent designs in his patent, he provided two examples of well-known and "conventional" stent designs — one with angular comers and one with semicircular rings and no corners. eee _— ——— —_ - — Nothing prevented the inventor from applying for patent claims that would have covered rings without "corners" had he considered such designs to be within the scope of his invention. Both alternatives were known to the inventor and there are no "shortcomings of language" (Festo, 344 F.3d at 1370) that would have prevented him from descnbing both alternatives in his patent claims had he desired to do so. Under some Fedcral Circuit cases, the patentee's decision to drafi a claim to cover only one of two or more known design alternatives operates to bar the patentee from later asserting that his claim nonetheless covers the other known alternatives under the DOE. In other cases, including this one, the Federal Circuit has reached the opposite result. Patentees and their competitors both would benefit from a decision that provides clarity by resolving the conflict between these diametrically opposed lines of precedent. 28 CONCLUSION The petition for a writ of certiorari should be granted. OF Counsel: Constantine L. Trela, Jr. SIDLEY AUSTIN LLP One South Dearborn Street Chicago, [IL 60603 (312) 853-7000 Respectfully submitted, Gregory L. Diskant Counsel of Record Eugene M. Gelernter Sean Marshall PATTERSON BELKNAP WEBB & TYLER LLP 1133 Avenue of the Americas New York, NY 10036 (212) 336-2000 Attorneys for Petitioners APPENDIX la APPENDIX A UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 2008-1003, -1072 CORDIS CORPORATION, Plaintiff-Appellant, BOSTON SCIENTIFIC CORPORATION and SCIMED LIFE SYSTEMS, INC., Defendants-Cross Appellants Gregory L. Diskant, Patterson, Belknap Webb & l'yler LLP, of New York, New York, argued for plaintiff- appellant. With him on the brief were Eugene M. Gelernter, Thomas W. Pippert, Kathleen M. Crotty, Scott W. Parker and Scott B. Howard, Of counsel was Michael J. Timmons Of counsel on the brief was Constantine L. Irela, Jr., Sidley Austin LLP, of Chicago, Illinois. John M. Desmarais, Kirkland & Ellis LLP, of New York, New York, argued for defendants-cross appellants. With him on the brief were Peter J. Armenio, Young J. Park and Timothy K. Gilman. Appealed from: United States District Court for the District of Delaware Judge Sue L. Robinson UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 2008-1003, -1072 CORDIS CORPORATION, Plaintiff-Appellant, BOSTON SCIENTIFIC CORPORATION and SCIMED LIFE SYSTEMS, INC., Defendants-Cross Appellants. Appeals from the United States District Court for the District of Delaware in case no. 03-CV-027, Judge Sue I. Robinson. DECIDED: March 31, 2009 Before MAYER and DYK, Circuit Judges, and HUFF, District Judge. DYK, Circuit Judge. ” Honorable Marilyn L. Huff, District Judge, United States District Court for the Southern District of California, sitting by designation. 3a Cordis Corporation (“Cordis”) appeals, and Boston Scientific Corporation and Scimed Life Systems, Inc. (“Boston Scientific”) cross-appeal, from a final judgment of the United Siates District Court for the District of Delaware. The judgment was based on two separate jury verdicts of infringement: (1) infringement by Boston Scientific of claims 1 and 23 of U.S. Patent No. 4,739,762 (“the °762 patent”) and claim 2 of U.S. Patent No. 5,895,406 (“the °406 patent”), and (2) infringement by Cordis of claim 36 of US. Patent No. 5,922,021 (“the ’021 patent’). The judgment also determined that those claims were not invalid. Cordis Corp. v. Boston Scientific Corp., Civ. No. 03-027-SLR (D. Del. Sept. 24, 2007) (judgment). With one minor exception, we affirm. BACKGROUND Cordis and Boston Scientific own patents relating to intravascular stents, which are cylindrical lattice-like scaffolds inserted into a blood vessel and then expanded, often by using a balloon catheter, in order to hold the vessel open. Cordis owns the ’762 patent and the °406 patent, and Boston Scientific owns the ’021] patent. In January 2003, Cordis filed suit against Boston Scientific, alleging that several of Boston Scientific’s stents infringe various claims of the ’762 patent and the '406 patent. Boston Scientific counterclaimed, alleging that several of Cordis’s stents infringe various claims of the ’02] patent. The district court denied Cordis’s motion for a preliminary injunction against sales of one of Boston Scientific’s stents, and we affirmed. Cordis Corp. v. Boston Scientific Corp., 99 F. App’x 928 (Fed. Cir. 2004). We treat the Cordis claims and the Boston Scientific claims separately. Since Cordis is the appellant, we first discuss Boston Scientific’s claims against Cordis that are the subject of the Cordis appeal. ihe Boston Scientific claims: The jury returned a verdict in July 2005 that (a) Cordis’s Cypher, BX Velocity, BX Sonic, and Genesis stents do not literally infringe claim 36 of the ’021 patent; (b) “the Cypher, BX Velocity, BX Sonic and Genesis stents infringe the ‘corners’ limitation of claim 36 of the ’021 patent under the doctrine of equivalents”; and (c) claim 36 of the °021 patent is not invalid for obviousness. Cordis Corp. v. Boston Scientific Corp., Civ. No. 03-027-SLR, 2006 WL 1305227, at *1 (D. Del. May 11, 2006) (“Memorandum Opinion”). The district court denied Cordis’s motion for judgment as a matter of law or, in the alternative, a new trial. The Cordis claims: On summary judgment, the district court determined that claims 1 and 23 of the ’762 patent were not invalid. A separate jury returned a verdict in favor of Cordis in June 2005 that (a) Boston Scientific’s Express, Taxus Express, Express Biliary, and Liberté stents literally infringe claim 23 of the ’762 patent; (b) Boston Scientific induced literal infringement of claim 1 of the ’762 patent with respect to these stents; (c) the Liberté stent literally infringes claim 2 of the °406 patent; and (d) claim 2 of the ’406 patent is neither anticipated nor rendered obvious by the prior art. The district court denied Boston Scientific’s motion for judgment as a matter of law or, in the alternative, a new trial. After the district court entered judgment, Cordis and Boston Scientific both timely appealed. We have iurisdiction under 28 U.S.C. §§ 1291, 1292(c)(2), and 1295(a)(1). DISCUSSION We review the denial of a motion for judgment as a matter of law without deference, and we review the denial of a motion for a new trial for abuse of discretion. Hewlett- Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1318 (Fed. Cir. 2003). Each party raises issues that have little merit. We dispose of those arguments summarily, reserving more extended discussion for the few issues that merit attention. We first address Cordis’s appeal. A. “Wherein” clause construction Cordis challenges the judgment that its BX Velocity stent infringes claim 36 of the °021 patent. Claim 36 depends from claim 24, which in turn depends from claim 23. °021 patent col.22 1.42, col.21 1.16. The procedural posture of this issue is unclear. The jury found that the accused Cordis stents do not literally infringe claim 36 of the ’021 patent. Instead of addressing whether Cordis’s stents infringed claim 36 under the doctrine of equivalents, the jury was asked only to determine whether Cordis’s stents “infringe the ‘corners’ limitation of claim 36 of the °021 patent under the doctrine of equivalents.” J.A. at 11,238. The jury found that the “corners” limitation was infringed under the doctrine of equivalents. Apparently the parties agreed that the BX Velocity stent infringes all limitations of claim 36 (if properly construed by the district court) except the “corners” limitation, but the parties provided no reference in the record reflecting this agreement. However, the district court entered judgment of infringement of claim 36, and we assume that the judgment rests upon such an agreement. Cordis first argues that the district court erred in construing the “wherein” clause of claim 23, and that under a proper construction of this clause Cordis’s BX Velocity stent does not infringe claim 36.' The “wherein” clause of claim 23 describes how the struts within one expansion column or ring of a stent are connected to the struts of another column or ring, wherein the first expansion strut of the first expansion strut pair in the first expansion column has a longitudinal axis offset from a longitudinal axis of the first expansion strut of the second expansion strut pair in the second expansion column. 021 patent col.21 Il.1 1-15 (emphasis added). The district court construed this “wherein” clause in claim 23 to mean “the first expansion strut in the first column does not share a longitudinal axis with the second expansion strut in the second column.” Cordis Corp. v._ Boston Scientific Corp., Civ. No. 03-027-SLR, 2005 WL 1322966, at *2 (D. Del. June 3, 2005) (“Claim Construction”). The district court refused to construe the “wherein” clause in claim 23 to exclude so-called “180 degrees out-of-phase” stent designs. Claim construction is an issue of law, Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996), that we review without deference, Cybor Corp. v. FAS Technologies Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). Cordis urges that the district court’s construction improperly failed to exclude stents whose strut pairs are This argument does not apply to Cordis’s Cypher, BX Sonic, and Genesis stents. 7a arranged “180 degrees out of phase,” a phrase that both parties agree is in common usage in stent design. In such a 180- degree out-of-phase arrangement, the struts within each expansion column or ring are connected to form pairs, and the connected ends of the pairs in one ring face the connected ends of the pairs in the next ring, forming a mirror-image pattern. Cordis argues that if claim 23 excludes such 180-degree out-of-phase designs, then Cordis’s BX Velocity stent (which uses a 180-degree out-of-phase design) would not infringe claim 36. Cordis illustrated the 180-degree out-of-phase design with a diagram: ~y The BX Velocity Br. for Pl.-Appellant Cordis Corp. 3. Cordis argues that the same “wherein” clause appears in both claim 1 and claim 23; that the clauses must have the same meaning; and that the prosecution history shows that the “wherein” clause excludes 180-degree out-of-phase designs. Cordis’s argument is a bit confusing. Ihe issue is not the meaning of the “wherein” clause. Rather, the problem stems from the fact that claim 23 and claim | use different numbering systems, so that, for example, the ‘‘first expansion strut of the second expansion strut pair in the second expansion column” is not the same strut in claim 23 as in claim 1. Under the numbering system of claim 1, each strut in a column or ring is either the “first” or “second” strut of a pair, each pair in the first ring is a “first . . . pair,” and each pair in the second ring is a “second... . pair.”” Thus in claim > Claim 1 of the ’021 patent states: 1. A stent in a non-expanded state, comprising: a first expansion strut pair including a first expansion strut positioned adjacent to a second expansion strut and a joining strut of the first expansion strut pair that couples the first and second expansion struts at a distal end of the first expansion strut pair, a plurality of the first expansion strut pair forming a first expansion column; a second expansion strut pair including a first expansion strut positioned adjacent to a second expansion strut and a joining strut of the second expansion strut pair that couples the first and second expansion struts of the second expansion strut pair at a proximal end of the second expansion strut pair, a plurality of the second expansion strut pair forming a second expansion column; a first connecting strut including a first connecting strut proximal section, a first connecting strut distal section and a first connecting strut intermediate section, the first connecting strut proximal section being coupled to the distal end of the first expansion strut pair in the first expansion column and the first connecting strut distal section being coupled to the proximal end of the second expansion strut pair of the second expansion column, a plurality of the first connecting strut forming a first connecting strut column that couples the first expansion column to the second expansion column, the first connecting strut intermediate section being non-parallel to the first connecting strut proximal and distal sections, wherein the first expansion strut of the first expansion strut pair in the first expansion column has a longitudinal axis offset from a longitudinal axis of the first expansion strut of the second expansion strut pair_in_ the second expansion column. ‘021 patent col.18 11.9-41 (emphases added) 1, the “wherein” clause requires the first strut of every strut pair in the first ring to be offset from the first strut of every strut pair in the second ring, which would not be possible in a 180-degree out-of-phase design. However, under the numbering system of claim 23, each strut in a ring is individually numbered “first... second... third... fourth . , each pair in the first ring is individually numbered “first. ..second... third... fourth... ,” and each pair in the second ring is individually numbered “first... second... third... fourth... .” > Thus in claim 23, the “wherein” > Claim 23 of the ’021 patent states: 23. A stent in a non-expanded state, comprising: a first expansion column formed of a plurality of first expansion column strut pairs, a first expansion strut pair including a first expansion strut adjacent to a second expansion strut and a first joining strut that couples the first and second expansion struts at a proximal end of the first expansion strut pair, a_ second expansion strut pair including a third expansion strut adjacent to the second expansion strut and a second joining strut that couples the second and third expansion struts at a distal end of the second expansion strut pair, a third expansion_ strut pair including a fourth expansion strut adjacent to the third expansion strut and a third joining strut that couples the third and fourth expansion struts at a proximal end of the third expansion strut pair, a fourth expansion strut pair including a fifth expansion strut adjacent to the fourth expansion strut and a fourth joining strut that couples the fourth and fifth expansion struts at a distal end of the fourth expansion strut pair, a first expansion strut pair first corner formed where the first joining strut is coupled to the first expansion strut, and a first expansion strut pair second corner formed where the first joining strut is coupled to the second expansion strut, and a second expansion strut pair first cormer formed where the second joining strut is coupled to the second expansion strut, and a second expansion strut pair second comer formed where the second joining strut is coupled to the third expansion strut, and a third expansion strut pair first corner formed where the third joining strut is coupled to the third 10a expansion strut, and a third expansion strut pair second corner formed where the third joining strut is coupled to the fourth expansion strut, and a fourth expansion strut pair first corner formed where the fourth joining strut is coupled to the fourth expansion strut, and a fourth expansion strut pair second corner formed where the fourth joining strut is coupled to the fifth expansion strut; a second expansion column formed of a plurality of second expansion column strut pairs, a first expansion strut _pair including a first expansion strut adjacent to a second expansion strut and a first joining strut that couples the first and second expansion struts at a proximal end of the first expansion strut pair, a second expansion strut pair including a third expansion strut adjacent to the second expansion strut and a second joining strut that couples the second and third expansion struts at a distal end of the second expansion strut pair, a_ third expansion strut pair including a fourth expansion strut adjacent to the third expansion strut and a third joining strut that couples the third and fourth expansion struts at a proximal end of the third expansion strut pair, a fourth expansion strut pair including a fifth expansion strut adjacent to the fourth expansion strut and a fourth joining strut that couples the fourth and fifth expansion struts at a distal end of the fourth expansion strut pair, a first expansion strut pair first corner formed where the first joining strut is coupled to the first expansion strut, and a first expansion strut pair second corner formed where the first joining strut is coupled to the second expansion strut, and a second expansion strut pair first corner formed where the second joining strut is coupled to the second expansion strut, and a second expansion strut pair second comer formed where the second joining strut is coupled to the third expansion strut, and a third expansion strut pair first corner formed where the third joining strut is coupled to the third expansion strut, and a third expansion strut pair second corner formed where the third joining strut is coupled to the fourth expansion strut, and a fourth expansion strut pair first corner formed where the fourth joining strut 1s coupled to the fourth expansion strut, and a fourth expansion strut pair second corner formed where the fourth joining strut is coupled to the fifth expansion strut; and lla clause requires only one specific strut (the first strut of the first pair in the first ring) to be offset from one other specific strut (the “first expansion strut of the second expansion Strut pair” in the second ring). Cordis numbered a figure from the ’021 patent (also known as the Jang patent) to illustrate these different numbering systems: a first connecting strut column formed of a plurality of first connecting struts, each connecting strut of the first connecting strut column including a connecting strut proximal section, a connecting strut distal section and a connecting strut intermediate section, a first connecting strut proximal section is coupled to the joining strut of the second expansion strut pair of the first expansion strut column, and a first connecting strut distal section is coupled to the joining strut of the first expansion strut pair of the second expansion strut column, and a second connecting strut proximal section is coupled to the joining strut of the fourth expansion strut pair of the first expansion strut column, and a second connecting strut distal section is coupled to the joining strut of the third expansion strut pair of the second expansion strut column, the first connecting strut intermediate section being non-parallel to the first connecting strut proximal and distal sections wherein the first expansion strut of the first expansion strut pair _in the first expansion column has a longitudinal axis offset from a longitudinal axis of the first expansion strut of the second expansion strut pair in the second expansion column. "021 patent col. 19 1.53 —col.21 1.15 (emphases added). pro boss Jax Duet Chad Chee inte met aaa 6 pret Mie liter aod % ‘a \. : ad ald — is] — (nll poks Ins par bem enae —4 td eae wind? = an ort iB ew " (Bow © s &spernhen iva * I Br. for Pl.-Appellant Cordis Corp. 40. Because these two specific struts could be offset from each other but yet aligned with other struts to form a |180-degree out-of-phase pattern, the language of claim 23 includes 180-degree out-of-phase designs. Indeed, the parties appear to agree that on their face claim | and claim 23 each use a different numbering system to describe the relative arrangement of a stent’s struts, with the result that the claim 23 “wherein” clause does not exclude 180-degree out-of-phase designs. The question is whether the prosecution history requires that, despite its plain language, the “wherein” clause of claim 23 be construed to l3a use the same numbering system as claim |. Cordis argues that the prosecution history reflects such a “clear and unmistakable” disclaimer. Free Motion Fitness, Inc. v. Cybex Int'l, Inc., 423 F.3d 1343, 1353 (Fed. Cir. 2005); see also Omega Eng’ g, inc., v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003). We cannot agree. The “wherein” clause was added to claims | and 23 during the prosecution of the ’021 patent after the examiner rejected both claims as anticipated by European Patent Application No. 95307687.4, Pub. No. 0 709 067 A2 (““Pinchasik”). Pinchasik discloses a stent whose struts are arranged in a 180-degree out-of-phase design but whose struts are not numbered. During the first office action, the examiner rejected claims | and 23 as anticipated by Pinchasik, coloring one of Pinchasik’s stent design figures and numbering parts of the figure (labeled “Figure 2”’) according to the numbering system of claim 1 of the °021 patent.’ The examiner’s numbering system is, however, different than claim 23’s numbering system. The examiner’s rejection in light of Pinchasik made no reference to 180- degree out-of-phase designs, but simply stated that claim 1, claim 23, and other claims “are rejected under 35 U.S.C. § 102(b) as being anticipated by Pinchasik” and that “[w]ith respect to [these claims] . . . refer to the modified Figure 2 attached to this office action.” J.A. at 1705. After the “wherein” clause was added to claims | and 23, the examiner allowed both claims. Cordis argues that the examiner used only the numbering system of claim 1 when allowing both * The exhibit included at page 7994 of the Joint Appendix shows that the examiner colored in and labeled the figure from Pinchasik, but does not disclose numbering of the figure by the examiner. The parties appear not to dispute that the examiner did number the figure according to the numbering system of claim 1 of the ‘021 patent. l4a claim 1 and claim 23, and that the examiner necessarily assumed that claim 23 used the same numbering system as claim 1. However, the examiner did not say so, and we cannot simply suppose that the claims were allowed based on an assumed identity of numbering systems. We note that Cordis does not argue that Pinchasik anticipates claim 23 of the ’021 patent under the district court’s claim construction, which suggests that the examiner could have allowed the claim on other grounds. Cordis also argues that both the applicant and the examiner referred to stent pairs as “longitudinally offset,” but these references simply repeat the “wherein” clause and say nothing about different numbering systems. Finally, on the disclaimer issue, Cordis argues that the °021 patent’s provisional application described the invention as consisting of stents whose flexibility depended on connections between “split level” (and thus offset) strut pairs, but again this language in the provisional application did not discuss the system for numbering these connected strut pairs. A disclaimer must be “clear and unmistakable,” and unclear prosecution history cannot be used to limit claims. Free Motion Fitness, 423 F.3d at 1352-53; see also Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1381-82 (Fed. Cir. 2002). The plain language of claim 23 cannot be overcome by such unclear prosecution history. Although Cordis urges that no figure in the ’02] patent uses a 180-degree out-of-phase design, a patent is not confined to its disclosed embodiments. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). We affirm the district court’s construction of the “wherein” clause in claim 23 of the ’021 patent 3. Corners limitation Alternatively, Cordis argues that the judgment of infringement of claim 36 of the °021 patent by the BX Velocity stent should be set aside, because the jury erred in concluding that the “corners” limitation of claim 36 was satisfied under the doctrine of equivalents, and because the district court erred in denying judgment as a matter of law on this ground. The “corners” limitation appears both in the language of claim 36 itself and in claim 23, on which claim 36 depends.’ Cordis does not dispute the district court’s construction of “corners” as “a place where two surfaces meet to form an angle.” Claim Construction, 2005 WL 1322966, at *1. First, Cordis argues that the evidence did not support the jury’s verdict of infringement of this limitation under the doctrine of equivalents. A jury’s determination of infringement is a question of fact that we review to consider whether it is supported by substantial evidence. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1423 (Fed. Cir. 1997). The district court properly found that Boston Scientific presented sufficient expert testimony that Cordis’s BX Velocity stent meets the “corners” limitation of claim * Claim 36 of the ’021 patent states: 36. The stent of claim 24, wherein the first connecting strut proximal section is coupled to the second corner of the second expansion strut pair of the first expansion strut column, and the first connecting strut distal section is coupled to the first corner of the first cxpansion strut pair of the second expansion strut column, and the second connccting strut proximal section is coupled to the second corner of the fourth expansion strut pair of the first expansion strut column, and the second connecting strut distal section is coupled to the first corner of the third expansion strut pair of the second expansion strut column. 021 patent col.22 I1.42-52 (emphases added). l6a 36 under the doctrine of equivalents under the function-way- result test of Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950), a test that is still useful under Warner-Jenkinson Co. v. Hilton-Davis Chemical Co., 520 U.S. 17, 39-40 (1997), particularly for mechanical inventions. Boston Scientific’s expert Dr. Moore testified that the “corners” in claim 36 and the circular arcs or rounded corners of the BX Velocity stent both function as actual and potential reference points for joining adjacent stent rings, fulfill this function through their similar locations, and can or do result in offset connections between stent rings. Such testimony fulfills Boston Scientific’s obligation to “provide particularized testimony and linking argument . . . with respect to the function, way, result test when such evidence is presented to support a finding of infringement under the doctrine of equivalents.” Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996). Cordis next argues that the doctrine of equivalents should not be applied in this case because the jury’s finding of infringement vitiated the “corners” limitation.® Cordis asserts that the circular arcs of the BX Velocity stent cannot “form an angle” as required by the district court’s claim construction. Whether the doctrine of equivalents vitiated a patent claim is a question of law we review de novo. Pfizer, Inc. v. Teva Pharms. USA, Inc., 429 F.3d 1364, 1379 (Fed. Cir, 2005). The district court properly found that vitiation did not bar a doctrine of equivalents analysis here. Although we have “refused to apply the doctrine [of equivalents] .. . where the accused device contained the antithesis of the claimed 6 . . ‘ . Cordis also argues that circular arcs were disclaimed. We find no basis for this in the prosecution history of the ’021 patent. l7a structure,” Planet Bingo, LLC v. GameTech International, Inc., 472 F.3d 1338, 1345 (Fed. Cir. 2006), the circular arcs of the BX Velocity are not antithetical to the “corners” limitation in claim 36 of the ’021 patent. Boston Scientific’s theory that the circular arcs of the BX Velocity stent are equivalent to the “corners” in claim 36 does not vitiate the “corners” limitation, because it does not “render[ ] the pertinent limitation meaningless,” Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1359 (Fed. Cir. 2005), or “effectively eliminate that element in its entirety,” Warner- Jenkinson, 520 U.S. at 29. See Primos, Inc. v. Hunter's Specialties, Inc., 451 F.3d 841, 850 (Fed. Cir, 2006). We affirm the district court’s denial of Cordis’s motions for judgment as a matter of law or, in the alternative, a new trial on infringement of the ’021 patent. C. New claim construction arguments Cordis argues that the district court improperly declined after trial to adopt a new construction of “expansion columns” and “connecting strut columns” in the claims of the 021 patent. In a motion for judgment as a matter of law on infringement of the ’021 patent, Cordis raised for the first time the argument that the district court should adopt the construction of these terms that Boston Scientific had advocated in a different case relating to the ’021 patent.’ The district court declined to do so. Cordis Corp. v. Boston Scientific Corp., Civ. Nos. 03-027-SLR, 03-283-SLR, 2007 WL 2775087, at *1 (D. Del. Sept. 24, 2007). ’ The claim construction Cordis urged the district court to adopt was appealed to this court and has since been vacated and remanded. Jang v. Boston Scientific Corp., 532 F.3d 1330, 1331 (Fed. Cir. 2008) 18a Raising this argument for the first time in a motion for judgment as a matter of law more than a year after the jury’s infringement verdict was too late. “[L]itigants waive their nght to present new claim construction disputes if they are raised for the first time after trial.” Conoco, Inc. v. Energy & Envtl. Intl, L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006); see also Abbott Labs. v. Syntron Bioresearch, Inc. 334 F.3d 1343, 1357 (Fed. Cir. 2003). he district court properly declined to revise its claim construction in response to Cordis’s argument. D. Indefiniteness Cordis asserts that the district court erred in finding that claim 23 of the ’021 patent is not indefinite. Cordis argues that claim 36, and claim 23 on which it depends, are invalid unless claim 23’s “wherein” clause is construed to exclude 180-degree out-of-phase designs. Indefiniteness under 35 U.S.C. § 112 4 2 is an issue of claim construction and a question of law that we review de novo. Praxair, Inc. v. ATML, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008). We see no basis for Cordis’s argument. Claim 23 as construed by the district court is not indefinite. E. Obviousness Cordis argues that the jury erred in finding that claim 36 of the ’021 patent was not invalid for obviousness, and that the district court erred in denying Cordis’s motion for judgment as a matter of law of obviousness. The °021 patent claims priority to its provisional application. °021 patent col.1 11.6- 8. Cordis first argues that the district court should have ruled as a matter of law that the "021 patent was not entitled to a pnority date of April 26, 1996 (when the 021 patent’s provisional application was filed), and that the correct priority date is April 25, 1997 (when the ’021 patent’s non-provisional application was filed). Cordis asserts that the priority date is important because after April 26, 1996, and before April 25, 1997, inventors had created stents that demonstrated that claim 36 of the "021 patent was invalid as obvious under 35 U.S.C. § 103. Cordis’s basis for challenging the priority date is its theory that the °021 patent’s April 1996 provisional application did not provide a sufficient written description of the patent’s limitations, namely the limitation of claim 36 requiring connecting struts to be attached on one end at a “second” or bottom corner of a strut pair and on the other end at a “first” or top corner. The written description requirement of 35 U.S.C. § 112 9 1 is a question of fact, and we review a jury’s findings of fact relating to the written description requirement for substantial evidence. PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1243 (Fed. Cir. 2002). To comply with the written description requirement, an applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention,” New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1295 (Fed. Cir. 2002) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (emphasis omitted)), namely that he or she “had invented each feature that is included as a claim limitation,” New Railhead, 298 F.3d at 1295. The district court cited uncontradicted testimony from Boston Scientific’s expert Dr. Moore that the °021] patent’s provisional application provided a_ sufficient written description of the limitations of claim 36. We conclude that the jury could properly find that the °021 patent was entitled to an April 1996 priority date. Cordis alternatively argues that regardless of whether the ’021 patent has a priority date of April 1996 or April 1997, several earlier patents® were prior art rendering claim 36 obvious. Cordis asserts that it would have been obvious to one of ordinary skill in the art to combine features of these patents to create stents with the bottom- corner-to-top-corner connecting struts disclosed in claim 36 of the ’021 patent. “We review ‘[the] jury’s conclusions on obviousness, a question of law, without deference, and the underlying findings of fact .. . for substantial evidence.’” Johns Hopkins Univ. v. Datascope Corp., 543 F.3d 1342, 1345 (Fed. Cir. 2008) (quoting LNP Eng'g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1353 (Fed. Cir. 2001)). The district court cited uncontradicted testimony from Boston Scientific’s expert Dr. Moore that the prior art patents cited by Cordis would be unlikely to be combined to create the connectors of claim 36 of the ’021 patent, and that these prior art patents taught away from the bottom-to-top connectors described in claim 36 by describing features of such connectors as potentially harmful. The district court properly concluded there was substantial evidence that these prior art patents did not render claim 36 obvious. We affirm the district court’s denial of Cordis’s motion for judgment as a matter of law or, in the alternative, a new trial on invalidity of the ’021 patent. I] We next address Boston Scientific’s cross-appeal. * US. Patent Nos. 5,102,417: 5,449,373: 5,643,312; 5,733,303; and 6,348,065. A. Monographs Boston Scientific argues that the district court erred in holding that two monographs prepared by the inventor of the ’762 patent are not prior art, and erred in granting Cordis’s motion for summary judgment that the asserted claims of the °762 patent are not invalid “as to the asserted claims being invalidated by the Palmaz Monographs.” Cordis Corp. v. Boston Scientific Corp., Civ. No. 03-027-SLR (D. Del. June 3, 2005) (summary judgment order). If there are no facts in dispute, whether a reference is a prior art “printed publication” within the meaning of 35 U.S.C. § 102(b) is a question of Jaw.” In re Klopfenstein, 380 F.3d 1345, 1347 (Fed. Cir. 2004). Because the facts of the distribution of Dr. Palmaz’s monographs are not in dispute, we review de novo the issue of whether the monographs are prior art printed publications. In 1980 the inventor of the ’762 patent, Dr. Palmaz, prepared a ten-page paper describing his work on stents. This paper is the “1980 monograph.” At that time he was a resident at a hospital in California. His name was not on the paper. He gave copies of the paper to approximately six of his teachers at an oral presentation of his work to these physicians and several other colleagues. Pursuant to agreements, Palmaz later gave copies of the monograph to two companies (Vascor, Inc., and Shiley, Inc.) while attempting to % Under 35 U.S.C. § 102, “[a] person shall be entitled to a patent unless. . . (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” 22a commercialize his stent technology.'® Neither agreement required confidentiality, and the Shiley agreement specifically stated that Shiley “shall not be committed to keep secret any idea or material submitted.” J.A. at 19,473. In 1983 Dr. Palmaz revised the paper; the revised paper became the “1983 monograph.” In 1983 he also gave a copy of both monographs to Werner Schultz, a technician from whom Dr. Palmaz was seeking fabrication assistance. When Dr. Palmaz joined the faculty in 1983 at the University of Texas, San Antonio, he gave a copy of the 1983 monograph to a doctor there (who then gave it to the technician setting up Dr. Palmaz’s laboratory) and to the university as part of a research proposal. Dr. Palmaz applied for the patent that became the 762 patent in 1985. A document is publicly accessible if it “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.” In_ re Wyer, 655 F.2d 221, 226 (CCPA 1981) (quoting LC.E. Corp. v. Armco Steel Corp., 250 F. Supp. 738, 743 (S.D.N.Y.1966)). In general, “[a]ccessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988). Many of our cases in this area have concerned publications available in libraries, and the question has been whcther the publication has been sufficiently indexed to be publicly accessible. See, e.g., In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989); In re Hall, '° ‘The parties here agree that there is no evidence that copies of the monographs were given to a third commercial entity, Cook Inc., before the critical date of the "021 patent. 23a 781 F.2d 897, 899 (Fed. Cir. 1986); In re Wyer, 655 F.2d at 226. Other cases have involved widespread distribution so that the public could easily obtain copies of the publication. See, e.g., Kyocera Wireless Corp. v. Int’] Trade Comm’n, 545 F.3d 1340, 1350-51 (Fed. Cir. 2008). Here we have a somewhat different question: whether the distribution to a limited number of entities without a legal obligation of confidentiality renders the monographs printed publications under § 102(b). We have held that where a distribution is made to a limited number of entities, a binding agreement of confidentiality may defeat a finding of public accessibility. But we have also held that such a binding legal obligation is not essential. Klopfenstein, 380 F.3d at 1351. We have noted that “[w]here professional and behavioral norms entitle a party to a reasonable expectation” that information will not be copied or further distributed, “we are more reluctant to find something a ‘printed publication.’”!' Id. at 1350-51. We first discuss Dr. Palmaz’s distribution of copies of his monographs to his university and hospital colleagues. We have recognized the importance of “preserv[ing] the incentive for inventors to participate in academic presentations or discussions” by noting that professional norms may support expectations of confidentiality. Id. at ‘' In the public use context of § 102(b), we have similarly noted that a lack of an express promise of confidentiality is not determinative of public use, but is instead “one factor to be considered in assessing all the evidence.” Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1379 (Fed. Cir. 2004) (quoting Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1266 (Fed. Cir. 1986)), abrogated on other grounds by Egyptian Goddess, Inc. v. Swisa, Inc., $43 F.3d 665 (Fed. Cir. 2008) (en banc); see also Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1382 (Fed. Cir. 2005). 24a 1351. The record here contains clear evidence that such academic norms gave rise to an expectation that disclosures will remain confidential.'? Cordis’s expert Dr. Buller testified that the “code of practice which occurs worldwide in academic circles, in departments, in medicine” includes treating a document describing scientific research in the “same confidential manner as you would if you had been given it directly by the author.” J.A. at 8540-41. The district court properly concluded that Dr. Palmaz’s distribution of the monographs to his academic and research colleagues did not render the monographs prior art printed publications. However, Boston Scientific urges that, even if the academic and hospital distributions did not create public accessibility, the distribution of monographs to two commercial entities did so. These distributions occurred during attempts to interest the two companies in development of Dr. Palmaz’s stent designs. There is no claim here that the two commercial entities provided any express agreement to keep the document confidential; indeed, one entity’s disclosure agreement did not discuss the entity’s confidentiality obligations, and the other’ entity’s disclosure agreement’ specifically disclaimed such obligations (most likely to avoid a lawsuit resulting from inadvertent disclosure). Boston Scientific argues that under the decision of our predecessor court, the Court of Claims, in Garrett Corp. v. United States, “[w]hile distribution [of 12 The only potentially contrary testimony is a statement in a report by Boston Scientific’s expert that a “colleague, faculty member or other recipient [of the monographs] . . . would be under no obligation to maintain the disclosure in confidence.” J.A. at 19,386. As we have discussed, whether or not recipients have a legal obligation to maintain confidentiality is not determinative. 25a a government report] to government agencies and personnel alone may not constitute publication, distribution to commercial companies without restriction on use clearly does.” 422 F.2d 874, 878 (Ct. Cl. 1970) (citation omitted). However, the evidence here was sufficient to support a conclusion that there was an expectation of confidentiality between Dr. Palmaz and each of the two commercial entities. While the Shiley legal agreement executed before development discussions disclaimed a_ confidentiality requirement, Dr. Palmaz testified that he requested confidentiality during subsequent discussions and was “surprise[d]” when he was shown the language of the Shiley agreement. J.A. at 8517; id. at 19,354. There is no Suggestion that the request for confidentiality was not, in fact, honored. Dr. Palmaz confirmed that the entities kept their copies of the monograph confidential, whether or not they were legally obligated to do so. J.A. at 8502. The district court noted that “there is no evidence that [the commercial entities] would have distributed, or in fact did distribute, the 1980 Monograph outside of the company.” Cordis Corp. v. Boston Scientific Corp., Civ. No. 03-027- SLR, 2005 WL 1331172, at *4 (D. Del. June 3, 2005). There was no showing that similar documents in the past became available to the public as a result of disclosure by these or similar commercial entities, that these or similar commercial entities typically would make the existence of such documents known and would honor requests for public access, or that these or similar commercial entities had an incentive to make the document available, etc. The mere fact that there was no legal obligation of confidentiality—all that was shown here—is not in and of itself sutficient to show 26a that Dr. Palmaz’s expectation of confidentiality was not reasonable.’ We affirm the district court’s holding that Dr. Palmaz’s 1980 and 1983 monographs were not prior art printed publications under § 102(b), and we affirm the district court’s grant of Cordis’s summary judgment motion that the claims of the ’762 patent are not invalidated by the Palmaz monographs. B. Anticipation Boston Scientific argues that the jury erred in finding that claim 2 of the °406 patent is not invalid, and that the district court erred in not granting judgment as a matter of law on grounds of anticipation. Anticipation is a question of fact; we review the jury’s verdict for substantial evidence. Voda v. Cordis Corp., 536 F.3d 1311, 1321 (Fed. Cir. 2008). Boston Scientific’s theory is that Cordis’s °762 patent anticipates claim 2 of Cordis’s °406 patent. The parties agree that the *762 patent includes all elements of claim 2 of the ’406 patent, save for the functional language in claim | of the ’406 patent (on which claim 2 of the °406 patent depends). This functional language states, “such that the links and bands define an expandable structure having '> Boston Scientific asserted that the district court improperly did not allow it to argue that the monographs were prior art in light of the result of a different litigation involving the 762 patent. We do not need to reach the question of whether the carlier determination that the 762 patent was “valid” precluded further litigation of the validity determination in this case. 27a axial flexibility in an unexpanded configuration.” ’406 patent col.5 1].35-39 (emphases added).'* Boston Scientific argues that this “such that” claim language cannot operate as a claim limitation to distinguish the °406 patent over the prior art. Contrary to Boston Scientific’s argument, we have held that functional . language can be a claim limitation. See Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). We conclude that the jury could properly find that the ‘such that” claim language is a limitation of claim 1 of the °406 patent that barred a finding of anticipation. Boston Scientific alternatively argues that even if the “such that” functional language limits claim 2 to stents “having axial flexibility,” the evidence demonstrated that the °762 patent disclosed such axial flexibility. The district court, '* Claims | and 2 of the 406 patent state: 1. A stent having first and second ends with an intermediate section therebetween, and a longitudinal axis, comprising: a plurality of longitudinally disposed bands, wherein each band defines a generally continuous wave having a spatial frequency along a line segment parallel to the longitudinal axis; and a plurality of links for maintaining the bands in a tubular structure, wherein the links are so disposed that any single circumferential path formed by the links is discontinuous; such that the links and bands define an expandable structure having axial flexibility in an unexpanded configuration. 2. A stent according to claim 1, wherein each link is axially displaced from any circumferenttally adjacent link. ‘406 patent col. 5 11.26-41 (emphases added). 28a citing both the testimony of Boston Scientific’s expert Dr. Moore and the presumption of a patent’s validity, held that the evidence presented was sufficient for the jury to find that the °762 patent did not anticipate claim 2 of the °406 patent. The district court properly concluded that substantial evidence supported the jury’s verdict that claim 2 of Cordis’s ’406 patent was not invalid. We affirm the district court’s denial of Boston Scientific’s motion for judgment as a matter of law that claim 2 of the ’406 patent is anticipated and invalid. C. “Thin-walled”’ Boston Scientific argues that the jury erred in finding that Boston Scientific’s Express and laxus Express stents literally infringe claim 23 of the ’762 patent, and in finding that Boston Scientific induced literal infringement of claim 1 of the °762 patent with respect to these stents.’ 'S Claims 1, 13, and 23 of the ’762 patent state: l. A method for implanting a prosthesis within a body passageway comprising the steps of: utilizing a thin-walled, tubular member as the prosthesis, the tubular member having a plurality of slots formed therein, the slots being disposed substantially parallel to the longitudinal axis of the tubular member; disposing the prosthesis upon a catheter; inserting the prosthesis and catheter within the body passageway by catheterization of said body passageway; and expanding and deforming the prosthesis at a desired location within the body passageway by expanding a portion of the catheter associated with the prosthesis to force the 29a Claim 23 of the ’762 patent depends from claim 13. ’762 patent col.12 11.55-60. Boston Scientific also argues that the district court erred in denying its motion for judgment as a matter of law of noninfringement under the “thin- walled” limitation of claim | and claim 13. prosthesis radially outwardly into contact with the body passageway, the prosthesis being deformed beyond its elastic limit, 13. An expandable intraluminal vascular graft, comprising: a thin-walled tubular member having first and second ends and a wall surface disposed between the first and second ends, the wall surface having a substantially uniform thickness and a plurality of slots formed therein, the slots being disposed substantially parallel to the longitudinal axis of the tubular member, the tubular member having a first diameter which permits intraluminal delivery of the tubular member into a_ body passageway having a lumen, and the tubular member having a second, expanded and deformed diameter, upon the application from the interior of the tubular member of a radially, outwardly extending force, which second diameter is variable and dependent upon the amount of force applied to the tubular member, whereby the tubular member may be expanded and deformed to expand the lumen of the body passageway. 23. The expandable intraluminal vascular graft of claim 13, wherein the outside of the wall surface of the tubular member is a smooth surface, when the tubular member has the first diameter. '762 patent col.10 1.6-col.11 1.9; col.1] 1.62—col.12 1.15; col.12 11.55-60 (emphases added). 30a First, Boston Scientific argues that the district court construed the term “thin-walled” improperly. The district court construed “thin-walled” in claim | and claim 13 of the °762 patent as “the wall of the tubular member must have little extent from one surface to its opposite at both its first and second diameters.” Claim Construction, 2005 WL 1322966, at *2. The district court’s claim construction was proper, and the district court was not obligated, as Boston Scientific urges, to construe “thin-walled” to exclude stent walls whose struts are thicker than they are wide. Second, Boston Scientific complains that the district court refused to allow Boston Scientific to argue the prosecution history of the *762 patent to the jury, and that the district court’s exclusion of this argument prejudiced Boston Scientific’s noninfringement case. Boston Scientific had sought to use the prosecution history of the °762 patent to show that Cordis had admitted that stents whose thicknesses were within a particular numerical range were not “thin- walled.”'® In effect, Boston Scientific sought to argue claim construction to the jury. We have held that it is improper to argue claim construction to the jury because the “risk of confusing the jury is high when experts opine on claim construction.” CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1172-73 (Fed. Cir. 2005); see Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1364 n.6 (Fed. Cir. 2008). The district court thus properly excluded Boston Scientific’s claim construction argument before the jury, and properly held that its exclusion of this argument did not entitle Boston Scientific to a new trial. 16 When affirming the district court’s denial of Cordis’s preliminary injunction motion in this case, we found no error in the district court’s conclusion that the prosecution history did not limit “thin-walled” to “thicknesses no greater than 0.0045 inches.” Cordis Corp., 99 F. App’x at 933 3la Third, Boston Scientific argues that even under the district court’s claim construction, Cordis did not present sufficient evidence that the Express and Taxus Express stents meet the “thin-walled” limitations of claim | and claim 13 (on which claim 23 depends). The district court cited testimony by Cordis’s expert Dr. Buller describing how the Express and Taxus Express stents meet the “thin-walled” limitation of claims | and 23 under the district court’s construction of this limitation. Memorandum Opinion, 2006 WL 1305227, at *12. We conclude that the district court properly found that Cordis presented substantial evidence to support the jury's infringement verdict. We affirm the district court’s denial of Boston Scientific’s motion for judgment as a matter of law that the Express and Taxus Express stents do not infringe claims | and 23 of the ’762 patent under the “thin-walled” limitation of these claims. D. “Substantially parallel’ Boston Scicntific argues that the jury crred in finding that Boston Scientific’s Liberté stent infringes claims | and 23 of the ’762 patent, and that the district court erred in denying Boston Scientific’s motion for judgment as a matter of law of noninfringement under the “substantially paralle]”’ limitations of claim 1 and claim 13 (on which claim 23 depends). Both claim 1 and claim 13 describe stents whose slots (spaces or Openings within a stent’s lattice design) are “disposed substantially parallel to the longitudinal axis” of the stent. °762 patent col.10 1.61—col.1] 1.9; col.11 1.62 col.12 1.15 (emphasis added). Boston Scientific first contends that the district court erred by not construing the term “parallel” in claim 1 and claim 13 of the ’762 patent. This argument was not timely 32a raised before the district court and has been waived. Conoco 460 F.3d at 1359. Next, Boston Scientific argues that Cordis did not present substantial evidence that the Liberté stent meets the “substantially parallel” limitation in claims 1 and 23. Boston Scientific asserts that the Liberté stent’s banana-shaped slots are not substantially parallel to the stent’s longitudinal axis. The district court cited testimony of both parties’ experts to support its finding that Cordis provided sufficient evidence to support the jury’s’ infringement verdict under the “substantial’y parallel’ limitation. Memorandum Opinion, 2006 WL 1305227, at *10. We conclude that substantial evidence supported the jury’s verdict. Boston Scientific further asserts that the district court’s exclusion of the deposition testimony about the Liberté stent by Dr. Palmaz, the inventor of the ’762 patent, warrants a new trial. Dr. Palmaz testified during a deposition that the slots of the Liberté stent “deviate from the longitudinal axis” of the stent. J.A. at 11,520. The district court excluded this testimony, finding that Dr. Palmaz was not an expert on the Liberté stent and that his testimony did not provide relevant evidence of infringement and created a risk of prejudice. Memorandum Opinion, 2006 WL 1305227, at *14. Boston Scientific argues that this testimony of Dr. Palmaz was important in defining the meaning of the claim term “substantially parallel” and in rebutting Cordis’s evidence that the Liberté stent infringed claims 1 and 23 of the °762 patent. As noted earlier, claim construction cannot be argued to the jury. CytoLogix Corp., 424 F.3d at 1172- 73; see also Sundance, 550 F.3d at 1364 n.6. “[I]nventor testimony as to the inventor's subjective intent is irrelevant to the issuc of claim construction,” and as the inventor of the "762 patent, Dr. Palmaz also had no special expertise regarding the alleged infringement of the patent by the Liberté stent. Howmedica Osteonics Corp. v. Wright Med. 33a Tech., Inc., 540 F.3d 1337, 1346-47 (Fed. Cir. 2008); see also Air Turbine Tech., Inc. v. Atlas Copco AB, 410 F.3d 701, 714 (Fed. Cir. 2005). The district court’s exclusion of the Liberté stent portion of Dr. Palmaz’s deposition testimony was within its discretion. We affirm the district court’s denial of Boston Scientific’s motion for judgment as a matter of law or a new trial that the Liberté stent does not infringe claims 1 and 23 of the ’762 patent under the “substantially parallel” limitation of these claims. E. “Wave” Boston Scientific contends that the jury erred in finding that the Liberté stent infringes claim 2 of the °406 patent, and that the district court erred in denying Boston Scientific’s motion for judgment as a matter of law of noninfringement. Claim 2 of the ’406 patent depends from claim 1. °406 patent col.5 11.39-41. The parties agree that the Liberté stent infringes all! limitations of claim 2, except the limitation in claim 1 (on which claim 2 depends) describing “‘a plurality of longitudinally disposed bands, wherein each band defines a generally continuous wave having a spatial frequency along a line segment parallel to the longitudinal axis.” ’406 patent col.5 11.29-32 (emphasis added). First, Boston Scientific argues that the district court improperly refused to construe the term “wave” in claim 1. In fact, the district court did construe the claim language “longitudinally disposed bands, wherein each band defines a generally continuous wave having a spatial frequency along a line segment parallel to the longitudinal axis” as “the stent has multiple elongated surfaces that run parallel to the stent’s long axis, cach of these surfaces having the undulating appearance of a continuous wave,” though it 34a did not separately construe the term “wave.” Claim Construction, 2005 WL 1322966, at *1. As the district court pointed out, Boston Scientific did not suggest until after the close of the trial that the district court was required to construe the term “wave” in any other respect. Memorandum Opinion, 2006 WL 1305227, at *6. Under Conoco, this argument thus was not timely raised before the district court and has been waived. 460 F.3d at 1359. Alternatively, Boston Scientific argues that even under the district court’s claim construction, the evidence did not sufficiently support the jury’s infringement verdict. This contention is without merit. The district court cited testimony by Cordis’s expert Dr. Buller applying the court’s claim construction and describing how the Liberté stent meets the limitations of claim 2 of the °406 patent. Memorandum Opinion, 2006 WL 1305227, at *4 . We conclude that Cordis presented substantial evidence to support the jury’s infringement verdict. We affirm the district court’s denial of Boston Scientific’s motion for judgment as a matter of law that the Liberté stent does not infringe claim 2 of the 406 patent. F. Dismissal without prejudice The district court granted Boston Scientific’s motion for judgment as a matter of law that its Taxus Liberté stent (not to be confused with its Liberté stent or its Taxus Express stent) did not infringe the asserted claims of Cordis’s ’762 and ’406 patents. The district court held that it did not have jurisdiction to consider infringement claims relating to the Taxus Liberté stent because that stent had “no nexus to the United States.” Memorandum Opinion, 2006 WL 1305227, at *24. 35a However, Boston Scientific argues that the district court erred in dismissing Cordis’s infringement claims against the Taxus Liberté stent without prejudice, rather than with prejudice, and asserts that Cordis failed to prove that the Taxus Liberté stent infringed the asserted claims of the °762 and °406 patents. Cordis asserts that it did not present evidence at trial that the Taxus Liberté stent infringed the asserted claims of the 762 and °406 patents under 35 U.S.C. § 271(f) because it believed such evidence related only to damages rather than to infringement liability. '’ “Congress has not clearly stated in 35 U.S.C. § 271 or in any other statute that § 271’s requirement that the infringing act happen within the United States is a threshold jurisdictional requirement as opposed to an element of the claim.” Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353, 1363 (Fed. Cir. 2008), cert. denied sub nom. GlowProducts.com v. Litecubes, LLC, 129 S. Ct. 578 (2008). Thus, the question of whether the Taxus Liberté stent had a nexus to the United States was an element of Cordis’s liability claims, rather than a jurisdictional requirement. Because “a failure to prove the allegations alleged in a complaint requires a decision on the merits, not a dismissal for lack of subject matter jurisdiction,” id. at 1361, the district court’s dismissal of Cordis’s infringement claims regarding the Taxus Liberté stent should have been with prejudice. We reverse the district court’s dismissal without prejudice of Cordis’s claims that the Taxus Liberté stent infringed the asserted claims of the ’762 and °406 patents, 17 Cordis argues that the Taxus Liberté stent has the same structure as the Liberté stent. We see no error in the district court’s determination that the Taxus Liberté stent and the Liberté stent are different products. 36a and remand with instructions to dismiss the claims with prejudice. li] We affirm the district court’s judgment in all respects save one. We reverse the district court’s dismissal without prejudice of Cordis’s claims that the Taxus Liberté stent infringed the asserted claims of the °762 and °406 patents, and remand with instructions to dismiss the claims with prejudice. AFFIRMED-IN-PART, REVERSED-IN-PART, REMANDED COSTS No costs. APPENDIX B IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE CORDIS CORPORATION, ) ) Plaintiff, ) ) v. ) Civ. No. 03-027-SLR ) BOSTON SCIENTIFIC ) CORPORATION and SCIMED ) LIFE SYSTEMS, INC., ) ) Defendants. ) ORDER At Wilmington this | 1" day of May, 2006, consistent with the memorandum opinion issued this same date; IT IS ORDERED that: g BSC's renewed motion for judgment as a matter of law of noninfringement and invalidity (D.I. 378) is denied; ee BSC's motion for reconsideration of the without prejudice aspect of the court's order dismissing Cordis’ infringement claims against the Taxus Liberté stent (D.1. 382) ts denied; and sn 3. Cordis’ renewed motion for judgment as a matter of law, or, in the alternative, a new tnal on 3508664v.1 38a infingement and invalidity of the '021 patent (D.I. 398) is denied. 4. The Clerk of Court is directed to enter judgment consistent with the verdicts (D.I. 360, D.I. 381) reached by each of the juries. Mot United Statles Brairint Judge 4$08664v 1 39a APPENDIX C IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE CORDIS CORPORATION, Plaintiff, Ne Ne eee ee” v. Civ. No. 03-027-SLR BOSTON SCIENTIFIC CORPORATION and SCIMED LIFE SYSTEMS, INC., Defendants. BOSTON SCIENTIFIC SCIMED, INC. and BOSTON SCIENTIFIC CORPORATION, Plaintiffs, Civ. No. 03-283-SLR Vv. CORDIS CORPORATION and JOHNSON AND JOHNSON, INC., Defendants. MEMORANDUM ORDER At Wilmington this 24th day of September, 2007, having reviewed the various pending motions of Cordis Corporation ("Cordis") in the above captioned cases, and the papers filed in connection therewith; 3512004v | 40a IT IS ORDERED that Cordis's motion for judgment as a matter of law or, in the alternative, a new trial, on infringement of U.S. Patent No. 5,922,021 ("the '021 patent") (Civ. No. 03-027-SLR, D.l. 426) is denied, for the reasons that follow: l. Procedural background. The above captioned litigation involves cross-claims of infringement by Cordis and Boston Scientific Corporation ("BSC"),' which parties count among the major players in the very lucrative medical device market related to interventional cardiology. More specifically, the patents at issue relate to stents, construed in this case as “tubular structure{s] left inside a vessel to hold the vessel open." Stent technology has advanced over the years (and the focus of the litigation has evolved) from various designs of bare metal stents to using those same designs as platforms for drug-eluting stents ("DES"). 2. With respect to the instant litigation, the two cases were tried to scparate juries and, in June 2005, the following verdicts were returned: (a) BSC's Express, Taxus Express, and Express Biliary stents (collectively, "the Express stents"), as well as the Liberte stents, literally infringe claim 23 of U. S. Patent No. 4,739,762 ("the '762 patent"); (b) BSC has induced literal infringement of claim 1 of the '762 patent with respect to those stents; (c) the Liberte stent literally infringes claim 2 of U.S. Patent No. 5,895,406 ("the '406 patent"); (d) claim 2 of the '406 patent is neither anticipated nor rendered obvious by the prior art; (e) Cordis's Cypher stent infringes claim 8 of U.S. Patent No. 6,120,536 ' The parties to this litigation have undergone various corporate iterations. For ease of reference, however, the court has designated only "Cordis" and "BSC" as the primary litigants. 3512004v.1 ("the '536 patent"); (f) claim 8 of the '536 patent is not invalid for obviousness; (g) Cordis' Cypher, BX Velocity, BX Sonic and Genesis stents do not literally infringe claim 36 of the '021 patent; (h) the Cypher, BX Velocity, BX Sonic and Genesis stents infringe the "corners" limitation of claim 36 of the '021 patent under the doctrine of equivalents; and (i) claim 36 of the '021 patent is not invalid for obviousness. (Civ. No. 03-027-SLR, D.I. 360, 381) The parties filed post- trial motions, which were resolved by memorandum opinion and order dated May 11, 2006. (Civ. No. 03-027-SLR, D.1. 416, 417) Cordis has since filed a motion for reconsideration,” the pending motion for judgment as a matter of law (its second such motion), and a motion for a new trial on the '536 patent based on newly discovered evidence concerning the incidence of late thrombosis (Civ. No. 03-283-SLR, D.I. 515). a Shortly before trial was conducted in the above captioned cases, the named inventor of the '021 patent, G. David Jang, M.D. ("Dr. Jang"), filed suit against BSC in the Central District of California. (D.I. 427 at ex. A) In his lawsuit, Dr. Jang charged, inter alia, that BSC was in violation of a certain Assignment Agreement whereby BSC had agreed to pay Dr. Jang up to $160 million based on revenues generated by products developed by BSC that incorporated Dr. Jang's coronary stent technology or patents, including the '021 patent. In order to determine whether BSC's stents were subject to the payment obligation (i.e., whether the BSC stents were "Contingent Payment Products" under the Assignment Agreement), the court had to determine whether the stents infringed the '021 patent. Consistent with the familiar two-step infringement analysis, the court construed the disputed claim limitations of the '021 * (Civ. No. 03-027-SLR, D.I. 418, resolved by D.I. 429) 3§12004v.1 42a patent. (D.I. 427 at ex. F) 4. Analysis. Cordis asserts at bar that this court should adopt the claim construction that BSC successfully advocated in the California case and should enter judgment of noninfringement based on that claim construction. The court agrees with Cordis in principle that courts are free to revise their interlocutory rulings on claim construction at any time prior to the entry of judgment and that, generally, a patent's claim limitations should be construed consistently from one party to another. Nevertheless, the court declines to overturn the jury verdict (a verdict that followed a voluminous motion practice) under the circumstances at bar. Significantly, Cordis never presented to this court for its consideration the specific claim construction disputes now identified by Cordis as being critical to its noninfringement case. (Compare, e.g., Civ. No. 03-027-SLR, D.1I. 307, 368 with DA. 427 and exs. C and F) Cordis is not only asking the court to nullify a multitude of proceedings based on post-trial stratagems’ but, in essence, Cordis is asking the court to embrace a claim construction that is neither binding on the court nor necessarily persuasive’ The court declines to exercise its discretion in this manner. IT IS FURTHER ORDERED that Cordis’ motion for a new trial on the '536 patent based on newly discovered evidence concerning the incidence of late thrombosis (Civ. ’ The court acknowledges that Cordis moved to stay trial on the '021 patent just days before trial was to commence, which motion was denied by the court. (Civ. No. 03-027-SLR, D.L. 342, 351) According to Cordis, the court in California adopted the construction of the claim limitations at issue as advocated by BSC. 3512004y 1 43a No. 03-283-SLR, D.I. 515) is denied, for the reasons that follow: 1. Factual background. Unlike the ‘021 patent, which covers bare metal stents, the '536 patent is directed at a DES whose "topcoat" comprises "a_ biostable, non- thrombogenic material which provides long-term non- thrombogenicity to the device portion during and after release" of the drug. The above quoted limitation of claim | of the '536 patent” was construed by the court to mean "a matcrial that docs not promote thrombosis for a period of time that extends both during and after release of the biologically active material." (Civ. No. 03-283-SLR, D.1. 368) During the course of the trial, all parties conceded that bare meta] stents were known to be thrombogenic, and that the thrombosis rates for Cordis's Cypher stent and bare metal stents were essentially the same. Based on this undisputed evidence, Cordis argued to the jury that the material in the Cypher's topcoat was not "non-thrombogenic" within the meaning of claim 8; BSC argucd to the jury that the Cypher stent cannot be said to "promote" thrombosis because there are no additional thrombosis problems over bare metal stents. 2. More than a year after the jury reached its verdict in favor of BSC on this issue, the FDA announced the following: We are aware of recent data suggesting a small but significant increase in the rate of death and myocardial infarction (heart attack) possibly due to stent thrombosis (a blood clot in the stent) in paticnts treated with DES [drug-eluting stents]. The specific studies that * Claim 8 of the '536 patent [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_1037%3A1. Public record. Not legal advice.