Voda v. Cordis Corporation
536 F.3d 1311 (2008)
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Rule of Law:
Under the doctrine of prosecution history estoppel, a patentee who narrows a claim during prosecution by adding a limiting element is barred from later arguing that a product lacking that specific element infringes under the doctrine of equivalents. Additionally, a finding of willful infringement requires a showing of objective recklessness, and a jury verdict based on an outdated 'duty of care' standard must be vacated.
Facts:
- Dr. Jan K. Voda invented and obtained several patents for cardiac guide catheters designed to provide superior support during use.
- The patents described a key feature, identified as a 'second straight portion' or a 'first substantially straight leg,' which was designed to engage the wall of the aorta to provide stable backup support.
- Cordis Corporation manufactured and sold an 'XB' brand cardiac catheter.
- Initially, the Cordis XB catheter included a straight portion similar to that described in Voda's patent applications.
- Before Voda's patents issued, Cordis redesigned its XB catheter, replacing the straight portion with a curved portion.
- During prosecution of his '213 patent, to overcome a rejection by the patent examiner, Voda amended claim 4 to add several limitations, including the requirement of a 'first substantially straight leg' in the catheter's structure.
- Cordis continued to sell its redesigned XB catheter with the curved portion after Voda's patents were granted.
Procedural Posture:
- Dr. Jan K. Voda sued Cordis Corporation in the U.S. District Court for the Western District of Oklahoma, alleging infringement of three U.S. patents.
- The case was tried before a jury.
- The jury found that Cordis willfully infringed all asserted claims and that certain challenged claims were not invalid, awarding Voda a reasonable royalty.
- The district court denied Cordis's post-trial motion for judgment as a matter of law (JMOL) on the issues of invalidity and non-infringement.
- The district court granted Voda's motion for enhanced damages due to willfulness but denied his motion for a permanent injunction.
- Cordis appealed the judgment regarding claim construction, validity, infringement, and willfulness to the U.S. Court of Appeals for the Federal Circuit.
- Voda filed a cross-appeal challenging the denial of the permanent injunction and a separate claim construction ruling.
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Issue:
Does amendment-based prosecution history estoppel bar a patentee from asserting that an accused device with a curved portion infringes, under the doctrine of equivalents, a patent claim that was narrowed during prosecution to include a 'first substantially straight leg' limitation?
Opinions:
Majority - Gajarsa, J.
Yes. Amendment-based prosecution history estoppel bars a patentee from asserting infringement under the doctrine of equivalents for subject matter that was surrendered when a patent claim was narrowed during prosecution. Here, Voda amended claim 4 of the '213 patent to add the 'first substantially straight leg' limitation. This narrowing amendment created a presumption under Festo that Voda disclaimed catheters that do not have this feature. Because Voda failed to provide any argument to overcome this presumption, he is estopped from arguing that Cordis's catheter with a redesigned curved portion is equivalent to the claimed 'first substantially straight leg.' Therefore, the finding of infringement for claims 4 and 5 of the '213 patent is reversed. However, for other patent claims where the estoppel argument was not properly raised, the jury's finding of infringement under the doctrine of equivalents was supported by substantial evidence. The court also vacated the finding of willfulness because the jury was instructed on an old 'duty of care' standard, which was overruled by the 'objective recklessness' standard in In re Seagate while this case was on appeal. Finally, the denial of a permanent injunction was affirmed because Voda, a patent licensor, failed to show he personally suffered an irreparable injury that could not be compensated by monetary damages, as required by the eBay four-factor test.
Analysis:
This decision illustrates the powerful effect of prosecution history estoppel as a defense to infringement under the doctrine of equivalents. It shows how a narrowing amendment made to secure a patent can permanently surrender claim scope, preventing a patentee from recapturing that subject matter through an equivalence argument. The case also demonstrates the immediate impact of an intervening change in controlling law, as the Federal Circuit's Seagate decision on willfulness required vacating the jury's verdict. Finally, it reinforces the high bar for obtaining a permanent injunction after eBay, especially for non-practicing patent holders who must prove they have personally suffered irreparable harm.
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