C.R. Bard, Inc. v. Advanced Cardiovascular Systems, Inc.
911 F.2d 670 (1990)
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Rule of Law:
A seller of a product capable of being used to infringe a method patent is not liable for contributory infringement as a matter of law if there is a genuine issue of material fact as to whether the product has substantial noninfringing uses.
Facts:
- Percutaneous transluminal coronary angioplasty (PTCA) is a medical procedure that uses a balloon catheter to open narrowed coronary arteries, but the inflated balloon temporarily blocks blood flow.
- To solve this problem, perfusion catheters were developed with side openings (orifices) allowing blood to bypass the inflated balloon.
- Harvinder Sahota obtained U.S. Patent No. 4,581,017 ('017 patent) for a method of performing angioplasty where the catheter's blood-intake orifices are positioned entirely within the coronary artery, 'immediately adjacent' the balloon.
- C.R. Bard, Inc. (Bard) purchased all rights to the '017 method patent.
- Advanced Cardiovascular Systems, Inc. (ACS) manufactured and sold a perfusion catheter with a series of ten side openings, the closest being 6 mm from the balloon and the furthest being 6.3 cm away.
- During the patent application process, Sahota had distinguished his method from a prior art patent ('725 patent) that taught placing the catheter's intake orifices in the aorta, not the coronary artery.
- ACS presented evidence that 40-60% of coronary stenoses (blockages) are located less than three centimeters from the entrance to the coronary artery.
- This anatomical fact meant that for a significant number of procedures, the ACS catheter could be used with all its intake orifices positioned in the aorta, a method not covered by Bard's patent.
Procedural Posture:
- C.R. Bard, Inc. (Plaintiff) sued Advanced Cardiovascular Systems, Inc. (Defendant) in the U.S. District Court for the Central District of California.
- Bard alleged that ACS was liable for contributory infringement and induced infringement of its '017 method patent.
- ACS denied infringement and asserted that Bard's patent was invalid.
- The district court granted Bard's motion for summary judgment, finding ACS liable for infringement and holding the patent was not invalid.
- ACS (Defendant-Appellant) appealed the grant of summary judgment to the U.S. Court of Appeals for the Federal Circuit, with Bard as the Plaintiff-Appellee.
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Issue:
Is a party who sells a device capable of infringing a method patent liable for contributory infringement as a matter of law where evidence suggests the device also has substantial noninfringing uses?
Opinions:
Majority - Plager
No. A party is not liable for contributory infringement as a matter of law if there is a genuine issue of material fact as to whether its product has substantial noninfringing uses. For a defendant to be liable for contributory infringement under 35 U.S.C. § 271(c), the plaintiff must show that the article sold is not a staple article of commerce suitable for substantial noninfringing use. Here, ACS presented evidence that 40-60% of angioplasty procedures target stenoses located close to the aorta. In these cases, a surgeon could use the ACS catheter by placing all of its side openings in the aorta, which is a noninfringing use consistent with prior art that the patentee, Sahota, disclaimed during prosecution. This evidence creates a genuine factual dispute as to whether the ACS catheter has substantial noninfringing uses, making summary judgment inappropriate. Similarly, because there is a factual dispute over whether the device is ever used non-infringingly, summary judgment on induced infringement under § 271(b) and on the patent's validity was also improper.
Analysis:
This decision reinforces the high evidentiary burden for obtaining summary judgment in patent infringement cases, particularly for claims of contributory infringement. It establishes that the existence of a 'substantial noninfringing use' is a critical question of fact for a jury to decide, not a question of law for a judge, when there is competing evidence. The case highlights how a patent's prosecution history can create noninfringing alternatives for competitors, thereby shielding them from liability for contributory infringement. This ruling protects manufacturers of multi-use products from being summarily enjoined from the market simply because their product can be used in an infringing manner.
