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ADVANCED CARDIOVASCULAR SYSTEMS v. MEDTRONIC
August 25, 1999
ADVANCED CARDIOVASCULAR SYSTEMS, INC., PLAINTIFF,
MEDTRONIC, INC., DEFENDANT.
The opinion of the court was delivered by: Jensen, District Judge.
On August 11, 1999, the Court heard argument on plaintiff
Advanced Cardiovascular Systems, Inc.'s ("ACS") motions for
summary judgment of infringement and for summary judgment that
the Yock patents are not invalid and are not unenforceable.
Edward A. Mas appeared on behalf of ACS; Earnest Reveal appeared
for defendant Medtronic, Inc. Having considered the arguments of
counsel, the papers submitted, the applicable law, and the record
in this case, the Court hereby GRANTS the motions.
ACS and Medtronic are companies engaged in developing,
manufacturing, promoting, and selling medical devices, including
catheters used in percutaneous transluminal coronary angioplasty
("PTCA"). These parties and others are currently involved in a
complex series of patent infringement suits involving the
treatment of heart disease with catheters.
Coronary artery disease is a disease of the heart in which a
deposit, called a "stenosis," builds up in a coronary artery and
restricts blood flow through the artery. Reduced blood flow can
result in chest pain or heart attack. Coronary artery disease can
be treated in one of two typical ways. In the first, a surgeon
opens the patient's chest and grafts a vein or artery, usually
taken from the patient's leg, onto
the coronary artery to provide a detour for blood to flow around
The less invasive PTCA procedure involves the insertion of a
balloon dilatation catheter through an opening in the femoral
artery. The catheter is then threaded through the aorta to a
coronary artery, positioned across a stenosis, and inflated to
compress the stenosis and stretch the artery wall thereby
widening the path for blood flow through the coronary artery. A
guide wire is used to navigate the twisting path through the
arteries and to guide the balloon across the stenosis.
The patents-in-suit relate to rapid exchange catheters and a
method for performing coronary angioplasty using such catheters.
ACS has charged defendant with infringing four patents, all of
which are licensed to ACS. The Yock patents (so named after the
inventor, Paul G. Yock) consist of United States Patent No.
5,040,548 entitled "Angioplasty Method" (the "'548 patent");
United States Patent No. 5,061,273 entitled "Angioplasty
Apparatus Facilitating Rapid Exchanges" (the "'273 patent"); and
United States Patent No. 5,451,233 entitled "Angioplasty
Apparatus Facilitating Rapid Exchanges" (the "'233 patent").
These patents claim their priority date from an original single
parent patent application filed April 15, 1986. The fourth
patent, the Horzewski-Yock Patent, United States Patent No.
5,496,346 (the "'346 patent"), is an improvement on the Yock
rapid exchange catheter.
On October 10, 1995 plaintiff ACS filed its complaint against
defendant Medtronic (C-95-3577). Plaintiff alleges that
Medtronic's PTCA catheters willfully infringe the Yock patents,
either directly or contributorily. ACS seeks injunctive and
monetary relief, including treble damages and attorney's fees. On
March 12, 1996, ACS filed an additional suit (C-96-0942) alleging
willful infringement by Medtronic of the '346 patent. By the end
of March that case had been related to the litigation pending in
On March 16, 1999, the Court issued its claim construction for
the patents at issue. On March 17, 1999, plaintiff filed a motion
for summary judgment on Medtronic's affirmative defenses of
invalidity. The Court denied the motion and granted Medtronic's
cross-motion for leave to supplement its Response Chart. The
Court subsequently struck part of the amended Response Chart as
not in compliance with the Court's order.
ACS now moves for summary judgment of infringement with respect
to claim 3 of the '233 patent. Medtronic has filed a notice of
non-opposition to this motion. ACS has also moved for summary
judgment that the Yock patents are not invalid and not
unenforceable. Medtronic opposes this motion.
Procedural matters not unique to patent law are decided by
applying the law of the relevant regional circuit. See
Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1278
The Federal Rules of Civil Procedure provide for summary
adjudication when "the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as to any
material fact and that the party is entitled to a judgment as a
matter of law." Fed. R.Civ.P. 56(e).
In a motion for summary judgment, initially it is the moving
party's burden to establish that there is "no genuine issue of
material fact and that the moving party is entitled to judgment
as a matter of law." Fed.R.Civ.P. 56(c); British Airways Bd. v.
Boeing Co., 585 F.2d 946, 951 (9th Cir. 1978). Subsequently,
"[i]f the party moving for summary judgment meets its initial
burden of identifying for the court those portions of the
materials on file that it believes demonstrate the absence of any
genuine issues of material fact," the burden of production then
shifts so that "the non-moving party must set forth, by affidavit
or as otherwise provided in Rule 56, `specific facts showing
that there is a genuine issue for trial.'" T.W. Elec. Serv.,
Inc. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th
Cir. 1987) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 106
S.Ct. 2548, 91 L.Ed.2d 265 (1986)).
A. Infringement of Claim 3 of the '233 Patent
ACS has moved for partial summary judgment of infringement with
respect to claim 3 of the '233 patent. ACS bears the burden of
establishing infringement by a preponderance of the evidence.
See Kegel Co., Inc. v. AMF Bowling, Inc., 127 F.3d 1420, 1425
(Fed.Cir. 1997). Literal infringement is shown where all the
limitations of a claim are literally present in the accused
device. See Jurgens v. McKasy, 927 F.2d 1552, 1560 (Fed.Cir.
Medtronic has filed a statement of non-opposition to the
motion. Given the Court's claim construction, Medtronic believes
that it cannot successfully oppose summary judgment at this time
and wishes to have summary judgment entered to preserve its
rights on appeal. ACS has met its burden of showing that the
accused device contains each element of the claim. Accordingly,
the Court grants summary judgement of infringement of claim 3 of
the '233 patent.
B. Validity — Obviousness
ACS moves for summary judgment that Medtronic has failed to
establish a prima facie case of obviousness and thus may not
present an affirmative defense of invalidity on this ground at
trial. This defense has been asserted against claim 3 of the '273
patent, claim 6 of the '548 patent, and claims 1-3 of the '233
Once issued, a patent is entitled to a presumption of validity.
See 35 U.S.C. § 282. The party challenging the validity of an
issued patent must come forth with clear and convincing evidence
of invalidity. See Hybritech, Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1375 (Fed.Cir. 1986). The patent holder has
no duty to come forward with evidence of validity until after the
challenger has established a prima facie case of invalidity. See
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534
(Fed.Cir. 1983). If "materials facts are disputed, and
testimonial, documentary, and expert evidence are needed for
their resolution, summary adjudication is not indicated." See
Quad Envtl. Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870,
872 (Fed.Cir. 1991).
A patent is invalid as obvious at the time of patenting where
the subject matter would have been obvious to one with ordinary
skill in the art familiar with the teachings of the relevant
prior art. See Bonito Boats, Inc. v. Thunder Craft Boats, ...