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August 25, 1999


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.


A. Factual Background

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 a stenosis.

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.

B. Procedural History

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 this Court.

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.

C. Legal Standard

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 (Fed.Cir. 1995).

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. 1991).

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 patent.

1. Legal standard

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, ...

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