Fischell et al v. Cordis Corporation

BRIEF in Opposition

D.N.J.February 28, 2017

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY TIM A. FISCHELL, ROBERT E. FISCHELL, and DAVID R. FISCHELL, Plaintiffs, v. CORDIS CORPORATION, Defendant, and ABBOTT LABORATORIES and ABBOTT CARDIOVASCULAR SYSTEMS INC., Intervenors. Civil Action No. 3:16-cv-00928-PGS-LHG (Document Electronically Filed) Returnable: April 3, 2017 Oral Argument Requested PLAINTIFFS’ BRIEF IN OPPOSITION TO ABBOTT’S MOTION TO DISMISS J. Michael Huget, Esq. Sarah E. Waidelich, Esq. HONIGMAN MILLER SCHWARTZ AND COHN, LLP 315 E. Eisenhower Parkway, Suite 100 Ann Arbor, MI 48108 T: (734) 418-4254 F: (734) 418-4201 mhuget@honigman.com swaidelich@honigman.com Jeffrey K. Lamb, Esq. Kimberly L. Rockwell, Esq. HONIGMAN MILLER SCHWARTZ AND COHN, LLP 2290 First National Building 660 Woodward Avenue Detroit, MI 48226 T: (313) 465-7558 F: (313) 465-7559 jlamb@honigman.com krockwell@honigman.com Co-Counsel for Plaintiffs Karen A. Confoy, Esq. Corinne McCann Trainor, Esq. FOX ROTHSCHILD LLP Princeton Pike Corporate Center 997 Lenox Drive, Building 3 Lawrenceville, New Jersey 08648 T: (609) 896-3600 F: (609) 896-1469 kconfoy@foxrothschild.com ctrainor@foxrothschild.com Co-Counsel for Plaintiffs Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 1 of 36 PageID: 1740 i TABLE OF CONTENTS I. PRELIMINARY STATEMENT ...................................................................................... 1 II. ARGUMENT .................................................................................................................. 4 A. The Fischells’ Contract-Related Claims Against Cordis For Unpaid Royalties Are Plausible and Well-Pled ................................................................. 4 1. The Fischells were not obligated to assert patent infringement claims in their Complaint against Cordis ................................................... 4 2. The Fischells’ claims against Cordis do not depend on proving patent infringement ................................................................................... 9 3. Abbot’s patent infringement authorities are inapposite ............................ 12 B. The Promus Litigation Does Not Foreclose Assertion of Any of the Fischells’ Patents Against Abbott in a Subsequent Action .................................. 14 1. Promus I was decided on patent exhaustion grounds—the court’s claim construction statements were dicta not essential to the judgment ................................................................................................ 16 2. The Federal Circuit affirmed only the judgment of the District Court in Promus and neither Promus decision binds this Court ............... 18 3. The Fischells’ claims are not barred by the principle of stare decisis .................................................................................................... 20 4. The Fischells’ claims are not barred by the principles of issue preclusion, claim preclusion, or the Kessler doctrine............................... 23 5. The Federal Circuit’s vacatur of the District Court’s nullification finding also effectively vacated the claim construction on which Abbott wrongly relies ............................................................................. 26 C. Multiple Fischell Patents Have Not Been Previously Litigated and Abbott’s Prospective Challenge to Them Cannot Be Resolved on a Motion to Dismiss .......................................................................................................... 28 1. The Fischells licensed numerous royalty bearing patents to Cordis that were sublicensed to Abbott and have never been adjudicated ........... 28 2. Even if it was relevant, Abbott cannot prove noninfringement with respect to the Fischells’ ‘856 patent via a Rule 12(b)(6) motion to dismiss ................................................................................................... 28 III. CONCLUSION ............................................................................................................. 30 Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 2 of 36 PageID: 1741 ii TABLE OF AUTHORITIES Page(s) CASES A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700 (Fed. Cir. 1983)........................................................................................ 17, 23 AFP 104 Corp. v. Columbia Cas. Co., Civ. A. No. 13-4077, 2014 WL 793780 (D.N.J. Feb. 26, 2014) ........................................... 14 Brain Life, LLC v. Elekta Inc., 746 F.3d 1045 (Fed. Cir. 2014) ............................................................................................ 26 Cellport Sys., Inc. v. Peiker Acustic GMBH & Co. KG, 762 F.3d 1016 (10th Cir. 2014)................................................................................ 2, 5, 9, 10 Cordis Corp. v. Boston Scientific Corp., 504 F. App’x 922 (Fed. Cir. 2013) (“Promus II”) ......................................................... passim Cordis Corp. v. Boston Scientific Corp., 868 F. Supp. 2d 342 (D. Del. 2012) (“Promus I”) ......................................................... passim Endo Pharms., Inc. v. Impax Labs., Inc., Civ. A. No. 16-2526, 2016 WL 6246773 (D.N.J. Oct. 25, 2016) ............................................ 7 Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398 (Fed. Cir. 1996)...................................................................................... 5, 9, 10 Esoterix Genetic Labs. LLC v. Qiagen Inc., 133 F. Supp. 3d 349 (D. Mass. 2015)................................................................................... 11 FlatWorld Interactives LLC v. Samsung Elecs. Co., Ltd., Civ. A. No. 12-804, 2014 WL 7464143 (D. Del. Dec. 31, 2014) .......................................... 29 Go Med. Indus. Pty., Ltd. v. Inmed Corp., 471 F.3d 1264 (Fed. Cir. 2006) ............................................................................................ 10 IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109 (Fed. Cir. 2011) ............................................................................................ 29 Jaasma v. Shell Oil Co., 412 F.3d 501 (3d Cir. 2005) .................................................................................................. 6 Joseph Hilton & Assocs., Inc. v. Evans, 201 N.J. Super. 156 (App. Div. 1985) .................................................................................... 6 Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 3 of 36 PageID: 1742 iii Lear v. Adkins, 395 U.S. 653 (1969) ...................................................................................................... 10, 11 Macom Tech. Solutions Holdings, Inc. v. Infineon Techs. AG, Civ. A. No. 2:16-02859, 2016 WL 6495373 (C.D. Cal. Oct. 31, 2016) .................................. 7 Macronix Int’l Co. v. Spansion Inc., 4 F. Supp. 3d 797 (E.D. Va. 2014) ................................................................................. 12, 13 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ........................................................................................................... 30 Max Sound Corp. v. Google, Inc., Civ. A. No. 5:14-04412, 2015 WL 2251060 (N.D. Cal. May 13, 2015)................................ 30 Medicinova, Inc. v. Genzyme Corp., Civ. A. No. 14-2513, 2015 WL 5007827 (S.D. Cal. Aug. 19, 2015) .............................. 13, 14 Medicinova, Inc. v. Genzyme Corp., Civ. A. No. 14-2513 L, Dkt. No. 13 (S.D. Cal. Sept. 4, 2015) .............................................. 13 Mercedes-Benz US, LLC v. ATX Group, Inc., Civ. A. No. 08-3529, 2009 WL 2255727 (D.N.J. July 27, 2009) ............................................ 6 MGA, Inc. v. Gen. Motors Corp., 827 F.2d 729 (Fed. Cir. 1987).............................................................................................. 26 Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007) ............................................................................................ 30 Nat’l Am. Ins. Co. v. United States, 498 F.3d 1301 (Fed. Cir. 2007) ............................................................................................ 18 Quad. Envt’l Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870 (Fed. Cir. 1991).............................................................................................. 30 Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (2008) ............................................................................................................ 16 Rates Tech. Inc. v. Mediatrix Telecom Inc., 688 F.3d 742 (Fed. Cir. 2012).............................................................................................. 19 Ritter v. Mount St. Mary’s College, 814 F.2d 986 (4th Cir. 1987) .............................................................................................. 24 Schreiber v. Eli Lilly & Co., Civ. A. No. 05-2616, 2006 WL 782441 (E.D. Pa. Mar. 27, 2006) ........................................ 30 Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 4 of 36 PageID: 1743 iv Sheridan v. NGK Metals Corp., 609 F.3d 239 (3d. Cir. 2010) ............................................................................................... 25 Simple Air, Inc. v. Google, Inc., Civ. A. No. 16-388, 2016 WL 4582085 (E.D. Tex. Sept. 2, 2016) ................................. 25, 26 Stack v. Abbott Labs., Inc., 979 F. Supp. 2d 658 (M.D.N.C. 2013) ............................................................................... 8, 9 Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561 (Fed. Cir. 1997) .......................................................................................... 11 TecSec, Inc. v. IBM Corp., 731 F.3d 1336 (Fed. Cir. 2013) ..................................................................................... passim Tessera, Inc. v. UTAC (Taiwan) Corp., Civ. A. No. 10-04435, 2012 WL 1067672 (N.D. Cal. Mar. 28, 2012) .................................... 6 United States v. Masonite Corp., 316 U.S. 265 (1942) ............................................................................................................ 16 J.V. ex rel. Valdez v. Macy’s, Inc., Civ. A. No. 13-5957, 2014 WL 4896423 (D.N.J. Sept. 30, 2014) .......................................... 9 Video Pipeline v. Buena Vista Home Entm’t, Inc., 210 F. Supp. 2d 552 (D.N.J. 2002) ........................................................................................ 5 Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100 (1969) ..................................................................................................... passim Zoetis LLC v. Roadrunner Pharmacy, Inc., Civ. A. No. 15-3193, 2016 WL 755622 (D.N.J. Feb. 25, 2016) ........................................... 13 STATUTES 35 U.S.C. § 101 ......................................................................................................................... 11 RULES Fed. Cir. R. 36 ..................................................................................................................... 18, 19 Fed. R. App. P. 36 ..................................................................................................................... 19 OTHER AUTHORITIES Black’s Law Dictionary 1072 (6th ed. 1990) ............................................................................ 17 Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 5 of 36 PageID: 1744 1 Plaintiffs Tim A. Fischell, M.D., Robert E. Fischell, Sc. D., and David R. Fischell, Ph. D. (“Plaintiffs” or “the Fischells”) respectfully submit their response brief in opposition to Intervenors Abbott Laboratories and Abbott Cardiovascular Systems Inc.’s (collectively, “Abbott”) Motion to Dismiss, Dkt. No. 93 (the “Motion”). As explained below, Abbott’s Motion wrongly attempts to impose upon the Fischells an onerous pleading standard that would be entirely inappropriate in a patent infringement litigation against Abbott, let alone in this contract-related litigation against Cordis. Further, Abbott’s Motion incorrectly argues that the Promus litigation in which Cordis asserted only three of the many Fischell patents against non- licensee Boston Scientific bars the Fischells’ claims here. Abbott’s Motion should be denied in its entirety. I. PRELIMINARY STATEMENT This case is about Cordis’s breach of its contractual obligations to pay the Fischells royalties for Cordis’s sublicensee Abbott’s sales of vascular stents that both Cordis and Abbott expressly and unequivocally agreed were Royalty Bearing. Abbott’s Motion represents the third attempt by Cordis and Abbott to avoid litigating this dispute on its merits. This Court has previously ruled that the Fischells “have set forth a plausible claim for breach of contract. . . .” (Dkt. No. 61 at 12) and also approved the Fischells’ claims for breach of the implied covenant of good faith and unjust enrichment. (Id. at 13, 19-20.) This alone should be enough to resolve the present Motion. In its Motion, Abbott asks this Court to analyze the judicial opinions from the previous Promus litigation (in which Cordis asserted only three of the many Fischell patents against non- party Boston Scientific); examine patent claims and the prosecution history for certain patents in the Fischell patent family (including the ‘856 patent and the Fischells’ foreign patents—which were not asserted in the Promus litigation); and make definitive, fact-intensive claim Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 6 of 36 PageID: 1745 2 construction and noninfringement determinations that, according to Abbott, should dispose of the Fischells’ breach of contract case against Cordis, with prejudice, at the pleading stage. Abbott’s arguments are not only legally and factually inaccurate, but they are wholly improper in the context of a 12(b)(6) motion. First, Abbott’s Motion rests on the false premise that the Fischells were obligated to plead detailed patent infringement claims against Abbott in their breach of contract case against Cordis for unpaid patent royalties. Abbott cites no authority to impose this onerous pleading standard on the Fischells’ contract-related claims, and Abbott’s purported supporting authorities are inapposite. Abbott’s position also is belied by the Fischell-Cordis Agreement, the Cordis- Guidant Agreement, the parties’ course of conduct, and the relevant case law, which states that a party’s contractual liability for unpaid patent license royalties—like Cordis’s here—is not absolved by a showing that the relevant products do not infringe the licensed patents. Parties may contract that royalties are due regardless of whether the product is infringing, and courts will enforce such agreements as written. See, e.g., Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 138 (1969); Cellport Sys., Inc. v. Peiker Acustic GMBH & Co. KG, 762 F.3d 1016, 1022-23 (10th Cir. 2014) (holding “irrelevant” evidence that the products did not infringe where license agreement acknowledged that certain products were Royalty Bearing for the convenience of the parties). That is precisely what the Fischells, Cordis, and Abbott explicitly did here with respect to Abbott’s “VISION and PENTA stents, and other variations” and the Court should enforce their agreement. (Corrected Second Amended Complaint, Dkt. No. 65 (“SAC”), Ex. E, at ¶ 2(d).) Second, even if the Fischells were obligated to prove that Abbott’s stents practice one or more claims of the Fischells’ patents in order to recover royalties under their 1999 Agreement Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 7 of 36 PageID: 1746 3 with Cordis—and they are not—nothing decided in Cordis’s prior litigation against Boston Scientific asserting a limited subset of the Fischells’ domestic patents against the Promus stent would bar the Fischells from making that proof here. The district court’s judgment of noninfringement (not invalidity) in Promus I rested on two independent grounds: (1) patent exhaustion and (2) a noninfringement determination based on the court’s claim construction. The patent exhaustion finding plainly does not apply to Abbott as a licensee, and the Promus claim construction does not bind this Court because the Federal Circuit’s affirmance without opinion in Promus II only endorsed the judgment of the district court (i.e., the overall judgment of noninfringement)—it did not affirm, either explicitly or by necessary implication, the district court’s claim construction. TecSec, Inc. v. IBM Corp., 731 F.3d 1336, 1342 (Fed. Cir. 2013). Further, the Promus I court’s claim construction does not bind this Court as a matter of law, and any of that claim construction’s persuasive value was negated by the Federal Circuit’s vacatur of the Promus I court’s essential findings nullifying three dependent claims of the ‘817 patent. In sum, the Promus litigation on which Abbott relies involved a limited subset of the relevant Fischell patents and a non-licensee, was decided on issues that do not apply to Cordis and Abbott or bind this Court, and cannot serve as a basis for stare decisis, issue preclusion, claim preclusion, or the Kessler doctrine as Abbott wrongly contends. Finally, multiple Fischell patents, including the Fischells’ foreign patents, were licensed to Cordis and sublicensed to Abbott under the parties’ agreements. Even Abbott does not assert that all of these Fischell patents were previously litigated, and they all are presumed to be valid and Royalty Bearing. If Abbott truly seeks a judgment that neither it nor Cordis owe royalties under the 2004 Cordis-Guidant Agreement in which they expressly agreed Abbott’s stents were Royalty Bearing, Abbott will have to challenge the validity of all of the Fischells’ licensed Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 8 of 36 PageID: 1747 4 patents, including their foreign patents—and not simply noninfringement—which Abbott plainly has not even attempted to do in its Motion. The Court should deny Abbott’s Motion and this case should proceed to discovery on the Fischells’ claims without further delay. II. ARGUMENT A. The Fischells’ Contract-Related Claims Against Cordis For Unpaid Royalties Are Plausible and Well-Pled Abbott’s Motion represents the third attempt by Cordis and Abbott to avoid litigating this dispute on its merits. On September 26, 2016, this Court substantially denied Cordis’s second motion to dismiss, and Cordis has since answered. (See Dkt. Nos. 61, 80.) In denying Cordis’s motion, this Court specifically noted that “Plaintiffs have alleged that a contract exists between the parties, Defendants breached that contract, and damages resulted from that breach. Therefore, Plaintiffs have set forth a plausible claim for breach of contract. . . .” (Dkt. No. 61 at 12.) The Court also approved the Fischells’ claims for breach of the implied covenant of good faith and unjust enrichment. (Id. at 13, 19-20.) Abbott now attempts to avoid this Court’s prior ruling by setting up the straw man argument that the Fischells were obligated to plead detailed patent infringement claims in order to succeed on their contract-related claims and failed to do so. Abbott’s arguments are contrary to law and should be rejected by this Court. 1. The Fischells were not obligated to assert patent infringement claims in their Complaint against Cordis Abbott’s Motion rests on the false premise that the Fischells were obligated to plead patent infringement by Abbott in their breach of contract case against Cordis. Abbott cites no authority to impose this onerous pleading standard on the Fischells. In fact, Abbott’s position is Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 9 of 36 PageID: 1748 5 belied by the license agreements between the Fischells and Cordis and Abbott, the parties’ course of conduct, and the relevant case law. Nothing in Section 2.13 of the 1999 Fischell-Cordis Agreement between the Fischells and Cordis requires the Fischells to plead patent infringement to properly allege that Cordis has breached its contractual obligations. Section 2.13 states: “As a result of the settlement of a lawsuit or for any other reason CORDIS shall have the right to sublease any of the ROYALTY BEARING PATENTS to a third party as long as the appropriate one (1%) percent ROYALTY is paid to the FISCHELLS in accordance with the terms of the AGREEMENT.” (See SAC, Ex. A.) The Fischells have identified this contractual provision (e.g., SAC at ¶¶ 4, 20); pled that Cordis has breached this provision (e.g., id., ¶¶ 7, 33-55); and pled that they are entitled to damages. (E.g., id. ¶¶ 7-9.) This is all that is required for a valid breach of contract claim under New Jersey law. E.g., Video Pipeline v. Buena Vista Home Entm’t, Inc., 210 F. Supp. 2d 552, 561 (D.N.J. 2002); Order, Dkt. No. 61, at 10-12. Further, in the relevant sublicense, Cordis and Abbott (through its predecessor-in-interest Guidant) expressly agreed that “[t]o avoid further dispute, GUIDANT acknowledges that . . . it shall pay royalties for Net Sales of its VISION and PENTA stents, and other variations . . . which shall be considered royalty bearing for purposes of the pass-through royalty under the Fischell Patents.” (See SAC, Ex. E (emphasis added).) The Supreme Court has affirmatively approved license agreements that predicate royalty payments on product sales, regardless of whether the products actually practice any claims of the licensed patents. See, e.g., Zenith Radio, 395 U.S. at 135; see also Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1408 (Fed. Cir. 1996) (“We agree . . . that royalties may be based on unpatented components if that provides a convenient means for measuring the value of the license.”); Cellport, 762 F.3d at 1023 (“[T]he Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 10 of 36 PageID: 1749 6 License Agreement creates a category of products on which royalties are due regardless of whether any of Cellport’s patents are infringed.”). So it is here, and Zenith Radio and its progeny are dispositive in the Fischells’ favor. Cordis’s course of conduct as pled in the SAC reinforces and more than plausibly demonstrates that Cordis breached its contract with the Fischells. See, e.g., Jaasma v. Shell Oil Co., 412 F.3d 501, 509 (3d Cir. 2005) (“New Jersey courts have given ‘great weight’ to the parties’ course of conduct in discerning the intent of the parties.”) (citing Joseph Hilton & Assos., Inc. v. Evans, 201 N.J. Super. 156, 171 (App. Div. 1985)). At all times prior to the present lawsuit, Cordis agreed with the Fischells that Abbott’s stents were Royalty Bearing and Cordis repeatedly asserted to Abbott in writing that certain of Abbott’s products were Royalty Bearing. (E.g., SAC at ¶¶ 46-49, Ex. E.) To the extent that Cordis or Abbott argue that Cordis should not be bound by its contractual agreement that the Abbott stents are Royalty Bearing, such an argument is improper on a motion to dismiss. The law is clear that it is improper to resolve a contractual interpretation dispute at the pleading stage. In Tessera, Inc. v. UTAC (Taiwan) Corp., Civ. A. No. 10-0443, 2012 WL 1067672 (N.D. Cal. Mar. 28, 2012), the court rejected defendant’s proposed contract interpretation that would have imposed liability for the nonpayment of royalties only if the products made were covered by a patent, ruling that a motion to dismiss was an improper means by which to resolve the contractual ambiguity: “[a]t this stage of the litigation, the court would be remiss to accept UTAC’s contention as a matter of law. . . . Resolution of the contract questions in this case will likewise require consideration of various kinds of evidence . . . . The contract interpretation question will wait until summary judgment or trial.” Id. at *2; see also Mercedes-Benz US, LLC v. ATX Group, Inc., Civ. A. No. 08-3529, 2009 WL 2255727, at *8 Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 11 of 36 PageID: 1750 7 (D.N.J. July 27, 2009) (“[A]t this stage, plaintiff’s reasonable interpretation of the contract is sufficient to overcome defendant’s motion to dismiss and to permit this case to proceed to discovery on the breach of contract claims.”). Here, it would likewise be inappropriate to accept Abbott’s incorrect contention that none of Abbott’s stents are “Royalty Bearing” and that therefore the Fischells cannot plead a valid breach of contract claim against Cordis. This is especially true because the Fischells have pled facts showing that both Cordis and Abbott affirmatively agreed that Abbott’s products were Royalty Bearing. (SAC ¶¶ 46-49, Ex. E.) Numerous courts have rejected defendants’ attempts to convert a breach of contract dispute into a patent infringement action. For example, in Endo Pharms., Inc. v. Impax Labs., Inc., Civ. A. No. 16- 2526, 2016 WL 6246773 (D.N.J. Oct. 25, 2016), another court in this district denied a motion to dismiss breach of contract and breach of the covenant of good faith and fair dealing claims relating to a dispute over a patent license agreement. Id. at *3. The Endo court ruled that plaintiff’s claims were sufficiently pled where the complaint alleged that a contract existed, that defendant had breached the contract, and that plaintiff had been damaged by the breach and rejected numerous of defendant’s arguments regarding contract interpretation as inappropriate at the pleadings stage. Id. at *4 (“Defendant’s arguments regarding its ‘royalty- free license’ and parol evidence are inapplicable at this stage of the litigation.”). Likewise, in Macom Tech. Solutions Holdings, Inc. v. Infineon Techs. AG, Civ. A. No. 16- 02859, 2016 WL 6495373 (C.D. Cal. Oct. 31, 2016), another case involving a breach of a patent license agreement, the court denied defendants’ motion to dismiss, holding that plaintiffs’ allegations were sufficient regarding the breach of contract claim. Id. at *19-20 (“The Court agrees with plaintiffs that they need not plead the elements of patent infringement in order to adequately allege breach of contract.”). Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 12 of 36 PageID: 1751 8 Lastly, another district court has previously rejected Abbott’s attempt to blur the distinction between breach of contract and patent infringement actions and rejected Abbott’s attempt to dismiss a claim for unpaid patent royalties. In Stack v. Abbott Labs., Inc., 979 F. Supp. 2d 658 (M.D.N.C. 2013), an individual inventor granted Abbott (then Guidant) a license for certain of his stent patents. Id. at 661. The agreement called for Stack to receive a royalty for each “Royalty Bearing Product.” Id. at 661. Stack alleged that he did not execute the agreement until receiving a letter from Guidant assuring him that the definitions of “Royalty Bearing Product” and “Drug Delivery Technology” were broad enough to include a particular category of devices known as paclitaxel-coated stents. Id. at 661-62. Stack alleged that Abbott breached the agreement by marketing the Xience V stent in Europe (which Stack alleged was a “Royalty Bearing Product”) and by selling additional products within the definitions contained in the agreement without paying him royalties in excess of $50 million dollars. Id. at 662. Just as it has here, Abbott moved to dismiss Stack’s complaint for failing to plead sufficient allegations concerning the royalties due for “Royalty Bearing Products.” Id. at 663. The Stack court denied Abbott’s motion to dismiss and held that “Stack has pleaded a plausible breach of contract claim by alleging that Abbott has failed to pay royalties and Launch Payments relating to three specifically-defined product types that Abbott agreed were ‘Royalty Bearing Products’ under the Agreement. . . .” Id. at 666. The Stack court also noted crucial distinctions between breach of contract disputes and patent infringement actions: If Abbott was satisfied, as it necessarily was, to have these definitions serve as the basis for assessing its liability for payment of royalties to Stack (in potentially large financial amounts), the court is not persuaded by Abbott’s current claim that it now lacks adequate notice of which of its products Stack’s lawsuit is about. In breach of contract actions such as this, unlike patent infringement cases, the relationship between the contracting parties is preexisting, so it is easier for the defendant to understand what products the suit concerns. For this reason, the cases relied upon by Abbott are distinguishable. Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 13 of 36 PageID: 1752 9 Id. at 666. For similar reasons, Abbott’s Motion here should also be denied. This is not a patent infringement dispute, and the Fischells and Cordis and Abbott have long agreed that the specific Abbott stents at issue here are Royalty Bearing.1 (E.g., SAC at ¶¶ 46-49, Ex. E.) Abbott’s argument that Cordis lacks notice of what this lawsuit is about is groundless. 2. The Fischells’ claims against Cordis do not depend on proving patent infringement A party’s contractual liability for unpaid patent license royalties—like Cordis’s here—is not absolved by a showing that the relevant products do not practice the patents at issue. Parties may—and often do—contractually agree that royalties are due regardless of whether the product is infringing, and courts will enforce such agreements as written. See, e.g., Zenith Radio, 395 U.S. at 138; Engel Indus., 96 F.3d at 1408 (“We agree with the magistrate judge’s statement that royalties may be based on unpatented components if that provides a convenient means for measuring the value of the license.”); see also Cellport, 762 F.3d at 1022-23 (holding “irrelevant” evidence that the products did not infringe where license agreement acknowledged that certain products were royalty bearing for the “convenience of the parties”). Abbott 1 That Abbott and Cordis expressly agreed that the Abbott products were Royalty Bearing in the 2004 Cordis-Guidant Agreement is a bad fact for Abbott, so Abbott tries to avoid the impact of it by arguing that the Fischells were not a party to that Agreement and thus have “no rights” under it. (See Abbott Br. at 3.) Whether the Fischells were third-party beneficiaries under that Agreement is immaterial to their claims, and most certainly improper to consider at the 12(b)(6) stage. See, e.g., J.V. ex rel. Valdez v. Macy’s, Inc., Civ. A. No. 13-5957, 2014 WL 4896423, at *3 (D.N.J. Sept. 30, 2014) (denying as premature defendant’s motion to dismiss plaintiff’s breach of contract claim based on third-party beneficiary status). The 2004 Cordis-Guidant Agreement (and the admissions contained in it), is evidence of Cordis’s misconduct—i.e., its failure to pay the Fischells pay-through royalties on products that Cordis and Abbott expressly agreed were Royalty Bearing. Cordis affirmatively sought the Fischells’ acquiescence prior to executing that Agreement with Guidant and it specifically provides for pass-through royalties to the Fischells. (Dkt. No. 65, Ex. C (seeking “approval” from Robert Fischell of certain terms of the Guidant Agreement).) Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 14 of 36 PageID: 1753 10 (Guidant) and Cordis explicitly agreed in the 2004 Cordis-Guidant Agreement (with the Fischells’ express consent) that certain Abbott stent products were and would be royalty bearing. (SAC, Ex. E, at ¶ 2(d) (“To avoid any further dispute, GUIDANT acknowledges that as of the date of execution of this Agreement, it shall pay royalties for Net Sales of its VISION and PENTA stents, and other variations . . . which shall be considered royalty bearing for purposes of the pass-through royalty under the Fischell patents.”).)2 Pursuant to Zenith Radio, Engel, and Cellport, the Fischells are not required to show patent infringement to establish that Cordis breached its contractual obligations to pay the Fischells royalties for Abbott’s sales of the specified stent products and their variations. Cellport, 762 F.3d at 1022-23. Cordis has agreed—in both the 2004 Guidant Agreement and through its repeated actions since—that Abbott’s stents are Royalty Bearing, and Zenith and its progeny confirm that contractual agreements that define products as “royalty bearing” are enforceable even if the products specified do not practice a licensed patent. Although the Supreme Court ruled in Lear v. Adkins3 that a licensee generally will not be estopped from challenging patent validity, even a licensee who does successfully challenge validity is only absolved of royalty damages prospectively from the date of formal challenge. See, e.g., Go Med. Indus. Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1273 (Fed. Cir. 2006) (“[T]he Lear doctrine does not prevent a patentee from recovering royalties until the date the licensee first challenges the validity of the patent. In 2 Abbott wrongly omitted this key provision of the 2004 Cordis-Guidant Agreement from its brief and instead cited only to substantively different contract language in an earlier Master License Agreement between Cordis and Guidant. (See Abbott Br. at 8-9.) 3 In Lear v. Adkins, 395 U.S. 653 (1969), the Supreme Court invalidated the doctrine of licensee estoppel that previously precluded a patent licensee from challenging patent validity. Post-Lear, licensees are generally able to assert patent invalidity as a defense in subsequent litigation. But as explained above, where the parties have contractually acknowledged and agreed that certain products are “royalty bearing,” that party may not later assert that those products are non- infringing; indeed, any evidence proffered as to non-infringement is simply “irrelevant.” Cellport, 762 F.3d at 1023. Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 15 of 36 PageID: 1754 11 other words, a licensee cannot invoke the protection of the Lear doctrine until it (i) actually ceases payment of royalties, and (ii) provides notice to the licensor that the reason for ceasing payment of royalties is because it has deemed the relevant claims to be invalid.”) (internal citation and quotation marks omitted). In Esoterix Genetic Labs. LLC v. Qiagen Inc., 133 F. Supp. 3d 349 (D. Mass. 2015), plaintiff sued for patent infringement as well as breach of contract and breach of the duty of good faith and fair dealing, alleging that defendant exceeded the scope of its license agreement. Id. at 350. Defendant moved to dismiss, asserting that the patent was invalid under 35 U.S.C. § 101 and that the state law claims must also be dismissed as they were entirely coextensive with the patent infringement claim. Id. at 351. The court agreed that the claims were invalid under Section 101 and dismissed the claim for patent infringement. Id. at 360-61. But the court also rejected defendant’s argument that the remainder of the contract claims must also be dismissed because the patent was held invalid. See id. at 361 (“Lear [v. Adkins, 395 U.S. 653 (1969)], however, does not hold that a licensee is retroactively absolved of all contractual liability if the underlying patent is invalidated. In fact, it is well-established that a licensor may pursue a licensee for breach of contract, notwithstanding the invalidity of an underlying patent.”) (emphasis added) (citing Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561, 1567-68 (Fed. Cir. 1997) (holding that a licensee remains liable for unpaid royalties up until the date that the licensee first formally challenges the validity of the claims)). Here, Cordis has never challenged the validity of the Fischell patents. To the contrary— Cordis litigated to enforce certain Fischell patents against Boston Scientific and, even after the conclusion of the Promus litigation, continued to assert that the patents were valid and that Abbott’s stents were Royalty Bearing. Even in its Answer, Cordis does not plead as an Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 16 of 36 PageID: 1755 12 affirmative defense that any of the Fischell patents are invalid. (See Dkt. No. 80.) Cordis, as the Fischells’ licensee, could only absolve itself of liability prospectively from the date it first challenged the patents’ validity, which it has not even done, and then only if it prevailed with a finding that all of the Fischell patents are invalid. Because Cordis has never challenged the validity of the Fischell patents and has contractually agreed that the Abbott stents are Royalty Bearing, the Fischells have stated a valid claim for relief and Abbott’s motion should be denied. 3. Abbot’s patent infringement authorities are inapposite Abbott’s Motion wrongly attempts to transform the Fischells’ breach of contract action against Cordis (for which the Fischells have stated a Court-approved plausible claim for relief) into a patent infringement action against Abbott, and then argues that the Fischells have not pled a plausible claim for relief under that cause of action. Tellingly, nearly all of Abbott’s cited cases concern the standard for pleading patent infringement and have nothing to do with the elements of a breach of contract claim. For example, in Macronix Int’l Co. v. Spansion Inc., 4 F. Supp. 3d 797 (E.D. Va. 2014), the plaintiff filed a bare-bones patent infringement complaint that did not comply with the plausibility standard of Twombly and Iqbal but instead only complied with Form 18 to the Federal Rules of Civil Procedure, which (at that time) set forth a cursory, boilerplate pleading standard for patent infringement. Macronix, 4. F. Supp. 3d at 798. The Macronix court required the patent infringement complaint be re-pled to meet the plausibility standard, but Macronix lends no support to Abbott’s argument that the Fischells’ contract-related claims should be dismissed. The Fischells do not argue that a lesser pleading standard than Iqbal and Twombly governs here, as Abbott incorrectly asserts; rather, the Fischells have already defended their claims against an Iqbal/Twombly challenge and this Court has ruled the claims sufficient. (See Dkt. No. 61 at 9, 12-13, 19-20.) Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 17 of 36 PageID: 1756 13 Abbott’s citation to Zoetis LLC v. Roadrunner Pharmacy, Inc., Civ. A. No. 15-3193, 2016 WL 755622 (D.N.J. Feb. 25, 2016) is similarly irrelevant. The court in Zoetis granted a motion to dismiss patent infringement claims without prejudice because the complaint improperly combined allegations of direct and indirect patent infringement into one count, resulting in “muddled pleading.” Id. at *4. The complaint also failed to plead that defendant’s accused product(s) infringed any of the claims of the asserted patents. Id. at *5-6. Zoetis, like Macronix, involved a pleading issue specific to patent infringement claims, and not the contract- related claims at issue here that the Court has already approved. The sole case cited by Abbott that discusses an actual breach of contract dispute— Medicinova, Inc. v. Genzyme Corp., Civ. A. No. 14-2513, 2015 WL 5007827 (S.D. Cal. Aug. 19, 2015)—actually supports the Fischells’ position, not Abbott’s. In Medicinova, the agreement at issue defined the term “Gene Therapy Patents” to include 246 worldwide patent applications and 5 U.S. granted patents. Id. at *3. Plaintiff’s six-page complaint alleged only that certain of defendant’s clinical trials were covered by “Gene Therapy Patents” but failed to identify a specific patent or allege any facts showing that defendant had conceded that its trials were covered by a “Gene Therapy Patent.” After the court in Medicinova granted a motion to dismiss with leave to amend, plaintiff filed a First Amended Complaint (“Medicinova FAC”). See Medicinova, Inc. v. Genzyme Corp., Civ. A. No. 14-2513, Dkt. No. 13 (S.D. Cal. Sept. 4, 2015). The Medicinova FAC added two paragraphs: Paragraph 13, which identified a specific “Gene Therapy Patent,” and Paragraph 14, which alleged that certain claims of that patent “cover the AAV vector technology used by [defendant].” Defendant answered shortly thereafter; there is no suggestion that plaintiff was required to plead detailed patent infringement claims to proceed. Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 18 of 36 PageID: 1757 14 Here, even following Medicinova, no additional amendment to the Fischells’ operative complaint is needed, because the Fischells’ SAC is already much more detailed than the Medicinova FAC. The SAC already identifies a specific patent and alleges that the patent is practiced by named Abbott products. (E.g., SAC at ¶¶ 17, 53, 68, 76, 77.) Further, Exhibit A to the SAC contains a list of additional patents assigned or exclusively licensed to Cordis, all of which are properly part of the SAC when ruling on a motion to dismiss. (Id. at Ex. A, p. 10); see also, e.g., AFP 104 Corp. v. Columbia Cas. Co., Civ. A. No. 13-4077, 2014 WL 793780, at *1 n.2 (D.N.J. Feb. 26, 2014) (Sheridan, J.) (“[I]n deciding a motion to dismiss, the Court may consider the Complaint [and] exhibits attached to the Complaint . . .”). And most importantly, Cordis has repeatedly acknowledged and agreed that Abbott’s stents are “Royalty Bearing” under the license agreements at issue in this dispute. (E.g., SAC at ¶¶ 46-49, Ex. E.) Instead of supporting Abbott’s baseless Motion, Medicinova confirms that the Fischells’ complaint against Cordis meets the Iqbal and Twombly requirements as pled. B. The Promus Litigation Does Not Foreclose Assertion of Any of the Fischells’ Patents Against Abbott in a Subsequent Action Even if the Fischells were obligated to prove that Abbott’s stents practice one or more claims of the Fischells’ patents in order to recover royalties under the 1999 Fischell-Cordis Agreement and 2004 Cordis-Guidant Agreement—and they are not—nothing decided in Cordis’s prior litigation against Boston Scientific regarding the Promus stent would bar the Fischells from making that proof. Abbott incorrectly argues that Promus I and Promus II are “fatal” to the Fischells’ case against Cordis. (Abbott Br., Dkt. No. 93-1, at 21.) In making this claim, Abbott grossly mischaracterizes the Federal Circuit’s order in Promus II—which was a nonprecedential affirmance without opinion—and attempts to transform it into a detailed, precedential opinion in Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 19 of 36 PageID: 1758 15 which the Federal Circuit expressly considered and endorsed all of the district court’s underlying rationale for its noninfringement findings. Further, Abbott asks this Court—at the pleading stage of a contract action, no less—to dispositively resolve complex claim construction and infringement issues of patents that were never litigated in Promus or anywhere else. Abbott’s arguments are factually and legally wrong, and completely inappropriate in the context of its 12(b)(6) motion. First, as explained above, Cordis has agreed—in both the 2004 Cordis-Guidant Agreement and through its repeated actions since—that the specific Abbott stents at issue in this case are Royalty Bearing. Zenith and its progeny confirm that contractual agreements like this that define products as “royalty bearing” are enforceable even if the products specified do not practice a licensed patent. Given these facts, the prior finding of noninfringement in Promus with respect to a limited subset of the Fischells’ patents is simply irrelevant to the Fischells’ royalty claims here. Second, as explained below, even if noninfringement mattered here, the Promus decisions still would not prevent the Fischells from proving Abbot’s stents practice one or more of the Fischells’ many patents. The district court’s judgment of noninfringement in Promus I rested on two independent grounds: (1) patent exhaustion and (2) a noninfringement determination based on claim construction. Cordis Corp. v. Boston Scientific Corp., 868 F. Supp. 2d 342, 358 (D. Del. 2012) (“Promus I”) (holding that “BSC’s sales of the Promus stent is [sic: are] noninfringing per the License and the doctrine of patent exhaustion . . . [and] Cordis cannot show that the Promus stent meets the ‘undulating’ or ‘circumferentially extending turn back portion’ limitation of the asserted patents”). The patent exhaustion finding plainly does not Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 20 of 36 PageID: 1759 16 apply to Abbott as a licensee4, and the Promus claim construction does not bind this Court. This is so because the Federal Circuit’s affirmance without opinion in Promus II only affirms the judgment of the district court (i.e., the judgment of noninfringement)—it does not affirm, either explicitly or by necessary implication, the district court’s claim construction. See Cordis Corp. v. Boston Scientific Corp., 504 F. App’x 922 (Fed. Cir. 2013) (“Promus II”). As the Federal Circuit has explained, where a district court’s noninfringement judgment is “based on two independent grounds” and the Federal Circuit affirms but “does not articulate a basis for affirmance, let alone an explication on claim construction[] . . . it cannot be concluded simply on the basis of this court’s summary affirmance that [it] expressly or by necessary implication decided the claim construction issues . . . .” TecSec, 731 F.3d at 1342. In sum, neither Promus opinion binds the Court here, even with respect to the patents previously asserted in the Promus litigation. 1. Promus I was decided on patent exhaustion grounds—the court’s claim construction statements were dicta not essential to the judgment “The longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item.” Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625 (2008). The Promus I court’s exhaustion finding applied to Boston Scientific’s stent sales because such stents were “acquired . . . relying upon the Fischell patents from a licensed third party (Abbott) . . . .” Promus I, 868 F. Supp. 2d at 354. This finding does not and cannot apply to Abbott, and it does nothing to support Abbott’s argument that Cordis does not owe royalties to the Fischells based on Abbott’s licensed stent sales. 4 As the Supreme Court explained, exhaustion applies where there has been “a disposition of [a patented] article [such] that it may fairly said that the patentee has received his reward for the use of the article.” See United States v. Masonite Corp., 316 U.S. 265, 278 (1942); see also Promus I, 868 F. Supp. 2d at 354. Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 21 of 36 PageID: 1760 17 Throughout the Promus litigation, Boston Scientific repeatedly argued that the patent exhaustion issue was “dispositive of the entire action[].” (See Ex. A, Boston Scientific’s Brief in Support of its Motion for Summary Judgment, Promus I, Dkt. No. 214, at 2 (D. Del. Feb. 10, 2012).)5 Boston Scientific also recognized that if the patent exhaustion issue resolved in its favor, “[t]here’s nothing left to talk about.” (See Ex. B, Transcript, Hearing Regarding Summary Judgment and Claim Construction, 8:6-16 (D. Del. May 11, 2012) (emphasis added).) Boston Scientific even moved for leave to file an early summary judgment motion and advised the district court that “[t]his Court need not—and should not—ever reach the issues of claim construction, infringement or invalidity in this case” because “[r]esolving the questions of authorized sale and patent exhaustion now will dispose of this case entirely.” (Ex. C, Boston Scientific’s Brief in Support of its Motion for Leave to File an Early Summary Judgment Motion on the Ground of Authorized Sale, Promus I, Dkt. No. 142, at 1-2 (D. Del. Aug. 11, 2011).) Likewise, Boston Scientific argued to the Federal Circuit that “[t]his Court may resolve this appeal entirely on the basis of the 2001 License Agreement between Cordis and Abbott, Promus’s manufacturer.” (Ex. D, Brief of Defendants-Appellees Boston Scientific, Promus II, Dkt. No. 25, at 4 (Fed. Cir. Jan. 16, 2013).) The district court in Promus I accepted Boston Scientific’s invitation to resolve the dispute on the basis of patent exhaustion. Promus I, 868 F. Supp. 2d at 354. Thus, the district court’s additional opinion on claim construction (and its noninfringement decision based on that claim construction) is dicta—i.e., “words of an opinion entirely unnecessary for the decision of the case”—and is not essential to the judgment. Black’s Law Dictionary 1072 (6th ed. 1990); A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700, 704 (Fed. Cir. 1983); see also Nat'l Am. Ins. 5 Unless otherwise noted, exhibits referenced herein are exhibits to the accompanying Declaration of Corinne McCann Trainor, dated February 28, 2017. Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 22 of 36 PageID: 1761 18 Co. v. United States, 498 F.3d 1301, 1306 (Fed. Cir. 2007) (“Dicta, as defined by this court, are statements made by a court that are unnecessary to the decision in the case, and therefore[,] not precedential (although [they] may be considered persuasive).”) (citations and internal quotation marks omitted). And the Fischells’ allegation characterizing this aspect of the decision as dicta (see SAC, ¶ 42) is entirely appropriate and not, as Abbott protests, a “mischaracterization[] of [a] precedential legal decision . . . .” (Abbott Br. at 2.)6 2. The Federal Circuit affirmed only the judgment of the District Court in Promus and neither Promus decision binds this Court In Promus II, the Federal Circuit affirmed the district court’s judgment without opinion and provided no explanation as to how it arrived at that conclusion: We affirm the judgment of the district court without opinion. We vacate, however, the portion of the district court’s decision ‘nullifying’ (invalidating) dependent claims 14-16 of U.S. Patent No. 6,547,817. See Cordis Corp. v. Boston Scientific Corp., 868 F. Supp. 2d 342, 356-57 (D. Del. 2012). Promus II, 504 F. App’x 922 (emphasis added). The Federal Circuit’s power to enter a judgment of affirmance without opinion—also called a “Rule 36 affirmance” or “summary affirmance”— comes from Federal Circuit Rule 36, which provides: Entry of Judgment – Judgment of Affirmance Without Opinion The court may enter a judgment of affirmance without opinion, citing this rule, when it determines that any of the following conditions exist and an opinion would have no precedential value: (a) the judgment, decision, or order of the trial court appealed from is based on findings that are not clearly erroneous; (b) the evidence supporting the jury’s verdict is sufficient; 6 Abbott repeatedly and incorrectly refers to the Federal Circuit affirmance without opinion in Promus II as “binding legal precedent” even though: (i) Rule 36 summary affirmances are issued when an opinion “would have no precedential value[,]” see Fed. Cir. R. 36 (emphasis added); (ii) the top of the Promus II opinion is marked with the words “This disposition is nonprecedential[]” (emphasis added); and (iii) Promus II is unpublished, which further evidences its status as a nonprecedential opinion. Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 23 of 36 PageID: 1762 19 (c) the record supports summary judgment, directed verdict, or judgment on the pleadings; (d) the decision of an administrative agency warrants affirmance under the standard of review in the statute authorizing the petition for review; or (e) a judgment or decision has been entered without error of law. Fed. Cir. R. 36 (emphasis added); see also Fed. R. App. P. 36. Affirmances without opinion are not uncommon; the Federal Circuit routinely issues summary affirmances when it determines that an opinion would have no precedential value and one of the five enumerated conditions exist. As the Federal Circuit explained in the TecSec case (discussed in detail below), an affirmance without opinion affirms only the judgment of the district court and issues implicitly or explicitly decided on appeal; it does not affirm the district court’s reasoning or analysis and it does not affirm issues that were not implicitly or explicitly decided on appeal. TecSec, 731 F.3d 1336. Where there are independent grounds for the judgment, and no articulation of which ground was the basis for the affirmance, the only thing that can be definitively said about the Federal Circuit’s affirmance without opinion is that the district court’s judgment was affirmed. Id.; see also Rates Tech. Inc. v. Mediatrix Telecom Inc., 688 F.3d 742, 750 (Fed. Cir. 2012) (“Rule 36 allows us to ‘enter a judgment of affirmance without opinion’ under certain circumstances. Since there is no opinion, a Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning.”) (emphasis added). In Promus I, there were two independent bases for the district court’s judgment of noninfringement: the first was based on patent exhaustion and the second was based on a claim construction ruling and the court’s finding that the accused products did not infringe based on its claim construction. Therefore, the Federal Circuit’s affirmance without opinion in Promus II Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 24 of 36 PageID: 1763 20 only means that the Federal Circuit affirmed the final judgment of noninfringement. It does not mean, as Abbott contends, that the Federal Circuit blessed, endorsed, or adopted the district court’s claim construction and conclusion (based on that claim construction) that Boston Scientific’s Promus stents do not practice any invention claimed in any of the Fischell patents asserted in that case (let alone the ‘856 patent or the Fischells’ foreign patents—which were not asserted in that case). In fact, the Federal Circuit likely decided to affirm based on patent exhaustion alone, which is exactly what Boston Scientific told the Federal Circuit that it could and should do—that is, “resolve this appeal entirely on” the basis of patent exhaustion. (Ex. D, Promus II, Dkt. No. 25, at 4.) 3. The Fischells’ claims are not barred by the principle of stare decisis Arguing that the Fischells’ claims against Cordis are barred “as a matter of stare decisis,” Abbott wrongly seeks to transform the Federal Circuit’s nonprecedential affirmance without opinion in Promus II into binding legal precedent on both (i) claim construction (even for patent terminology that was not at issue in that case) and (ii) noninfringement based on claim construction (even as to patents that were not asserted). This is flat-out wrong, and Abbott’s brief is replete with exaggerations and outright misstatements about what the Federal Circuit allegedly did in Promus II. For example, Abbott incorrectly argues that both the district court’s decision in Promus I and the Federal Circuit’s affirmance without opinion in Promus II “establish that the Abbott stents at issue here (Xience V and Vision), which are identical to the Promus stent in all material respects, do not practice the invention claimed in the Fischell Patents.”7 (Abbott Br. at 6.) Abbott also insists that “Judge Robinson and the Federal Circuit 7 Abbott’s repeated references to the “invention claimed in the Fischell Patents” is also inaccurate and misleading. The “Fischell Patents” in the Promus litigation represent a small Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 25 of 36 PageID: 1764 21 applied the NIR holdings to the Promus stent . . . and held that the Fischell patent claims, requiring an ‘undulating portion,’ did not cover the Promus stent with the Abbott architecture…” and “Judge Robinson and the Federal Circuit also considered Fischell patent claims, using the term ‘turn back’ in lieu of undulating . . . .” (Id. at 23.) But even a cursory review of the Federal Circuit’s affirmance without opinion shows that it clearly did not provide the “explication on claim construction” or infringement analysis that Abbott now claims. See TecSec, 731 F.3d at 1342. Abbott attempts to elevate the Federal Circuit’s affirmance without opinion in Promus II into something it explicitly is not—that is, an order affirming the judgment of noninfringement based on patent exhaustion and an order affirming the judgment of noninfringement based on claim construction, as well as an affirmance of the district court’s reasoning and analysis.8 This is improper—as recent Federal Circuit precedent commands. In TecSec, the Federal Circuit explained the meaning of an affirmance without opinion in circumstances very similar to those here. TecSec sued certain defendants as well as IBM for infringement; IBM’s case was severed and the cases against the other defendants were stayed. TecSec, 731 F.3d at 1340. In the IBM case, the district court granted summary judgment of noninfringement on two independent grounds: (1) a failure of proof showing that that IBM’s software contained every claim limitation of any asserted claim (irrespective of how those claims were construed); and (2) a failure to show that IBM’s software met the relevant limitations of the claims as construed. Id. TecSec appealed and the Federal Circuit affirmed without opinion. Id. subset of the “Fischell Patents” covered by the licenses at issue in this case. The ‘856 patent identified in the SAC was not even asserted in the Promus litigation. 8 Abbott stretches an already invalid argument even further by arguing that the affirmance without opinion should also be considered stare decisis as to patents that were not even asserted in the Promus litigation and claim language that was not at issue there. Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 26 of 36 PageID: 1765 22 On remand, TecSec stipulated that it could not prove infringement against the other defendants under the court’s claim construction, so a judgment of noninfringement as to those defendants was entered. Id. TecSec then appealed that second judgment. On appeal, the defendants argued that the “mandate rule” precluded TecSec from challenging the district court’s claim construction ruling based on the Federal Circuit’s prior affirmance without opinion in the IBM case. Specifically, defendants argued that (1) the district court’s claim constructions were within the scope of its judgment; (2) that judgment was affirmed in the IBM appeal; and (3) no issues were reserved for further consideration in the decision in the prior appeal. Id. at 1343. The Federal Circuit rejected each of defendants’ arguments and held that the mandate rule did not bar TecSec from challenging the district court’s claim construction. The Court explained: “[a]fter our mandate issues, the mandate rule ‘forecloses reconsideration of issues implicitly or explicitly decided on appeal’. . . . For an issue to be implicitly decided, it must be ‘decided by necessary implication.’” Id. at 1342 (citations omitted) (emphasis in original). Importantly, the Federal Circuit pointed out that the district court’s judgment of noninfringement was “based on two independent grounds” and “ . . . our Rule 36 decision does not articulate a basis for affirmance, let alone an explication on claim construction. On this record, it cannot be concluded simply on the basis of this court’s summary affirmance that we expressly or by necessary implication decided the claim construction issues in the IBM appeal.” Id. (emphasis added).9 9 The TecSec Court went on to analogize summary affirmances by the Supreme Court, noting that the Supreme Court has explained that its summary dispositions “affirm[] only the judgment of the court below, and no more may be read into [its] action than was essential to sustain that judgment.” Id. at 1343 (citation omitted) (emphasis added). “Thus, when the Supreme Court by summary disposition affirms a decision that rested on multiple grounds, the affirmance is Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 27 of 36 PageID: 1766 23 Likewise in Promus II, claim construction was not the only issue on appeal and claim construction was not essential to sustaining the judgment of noninfringement. Therefore, Abbott’s claim that the Federal Circuit’s summary affirmance is “binding precedent” as to claim construction (and noninfringement based on claim construction) is incorrect—the Fischells are not precluded from challenging claim construction even for the patents that were actually at issue in Promus I, let alone for other Fischell patents like the ’856 patent and the Fischells’ foreign patents, which were not even asserted in Promus I and have different claim language. Abbott’s stare decisis argument fails. 4. The Fischells’ claims are not barred by the principles of issue preclusion, claim preclusion, or the Kessler doctrine Collateral estoppel, or issue preclusion, does not bar the Fischells’ case against Cordis. When claim construction is not essential to a judgment of noninfringement, it is not entitled to collateral estoppel effect. A.B. Dick Co., 713 F.2d at 704 (“[W]e hold that judicial statements regarding the scope of patent claims are entitled to collateral estoppel effect in a subsequent infringement suit only to the extent that determination of scope was essential to a final judgment on the question of validity or infringement; further such statements should be narrowly construed.”) (emphasis added). Here, the district court’s claim construction of the “turn back” claim in Promus I was not essential to the judgment of noninfringement because the court first found that there was no infringement as to the stents sold by Boston Scientific based on the doctrine of patent exhaustion. See Promus I, 868 F. Supp. 2d at 358 (holding that “BSC’s sales generally not binding precedent for either ground.” Id. (emphasis added). “[A] Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning.” Id. (citation omitted). In sum, “[h]ad claim construction been the only issue in the IBM appeal, and had that claim construction been essential to sustaining the judgment of noninfringement, the preclusive effect of our Rule 36 judgment would have been undeniable. But that was not the case. Here, the mandate rule does not preclude TecSec from challenging claim construction.” Id. Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 28 of 36 PageID: 1767 24 of the Promus stent is [sic: are] noninfringing per the License and the doctrine of patent exhaustion . . . .”). Because this claim construction was not essential to the judgment, neither Promus I nor Promus II foreclose the Fischells from litigating claim construction on even the ‘817 patent if it becomes necessary to do so. TecSec is again instructive because the defendants in that case also unsuccessfully argued that collateral estoppel precluded TecSec from relitigating claim construction, wrongly asserting that the district court had construed claim terms that it considered “strictly necessary” to the grant of summary judgment. TecSec, 731 F.3d at 1344. TecSec responded that collateral estoppel did not apply because claim construction was “not necessary to the final judgment, which rested on multiple independent grounds.” Id. The Federal Circuit agreed with TecSec, explaining that “‘where the court in the prior suit has determined two issues, either of which could independently support the result, then neither determination is considered essential to the judgment.’” Id. (quoting Ritter v. Mount St. Mary’s College, 814 F.2d 986, 993 (4th Cir. 1987)). Because the TecSec court had affirmed without opinion the district court’s judgment of noninfringement, which was “independently predicated on alternative grounds” (only one of which was claim construction), claim construction “was neither actually determined by nor critical and necessary to [the Federal Circuit’s] summary affirmance in the IBM appeal” and thus collateral estoppel did not apply. Similarly, in Promus I, the district court’s judgment of noninfringement for Boston Scientific was predicated on both patent exhaustion and claim construction of the ‘817 patent and thus claim construction was neither actually determined nor critical and necessary to the Federal Circuit’s summary affirmance in Promus II and cannot foreclose the Fischells here in any way. Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 29 of 36 PageID: 1768 25 Res judicata—or claim preclusion—does not bar the Fischells’ case against Cordis either. Claim preclusion arises upon a showing by the defendant that there has been “(1) a final judgment on the merits in a prior suit involving; (2) the same parties or their privies; and (3) a subsequent suit based on the same causes of action.” (Abbott Br. at 28 (citing Sheridan v. NGK Metals Corp., 609 F.3d 239, 260 (3d. Cir. 2010) (emphasis added)).) As Abbott acknowledges in its brief, courts “[do] not apply this conceptual test mechanically,” but “focus on the central purpose of the doctrine, to require a plaintiff to present all claims arising out [of] the same occurrence in a single suit.” Id. (citation omitted). Abbott has made no showing, nor could it, that the Fischells’ current case against Cordis involving contract-related claims for unpaid royalties for products the parties expressly agreed are Royalty Bearing is “based on the same causes of action” as Cordis’s previous litigation against contractual stranger Boston Scientific for patent infringement relating to a small subset of the licensed Fischell patents. Abbott’s citation to Simple Air, Inc. v. Google, Inc., Civ. A. No. 16-388, 2016 WL 4582085 (E.D. Tex. Sept. 2, 2016) is inapposite to the facts of the present case. The Simple Air decision was the fourth iteration of patent infringement litigation between the same two parties (Simple Air and Google) over the same products (Cloud Messaging). Id. at *1. By contrast, the present lawsuit involves different parties (the Fischells, who were not parties to the Promus litigation), different claims (breach of contract et al.) and patents not previously asserted (i.e., the ‘856 patent and the Fischells’ foreign patents). Moreover, an important consideration in Simple Air was the fact that “SimpleAir could have included the ‘838 and ‘048 Patents in SimpleAir II/III.” Id. at *5 (emphasis in original). Notwithstanding Abbott’s weak argument that Cordis should have asserted the ‘856 patent in the Promus litigation—even though it issued after the conclusion of summary judgment briefing—the fact remains that the Fischells could not have Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 30 of 36 PageID: 1769 26 asserted their contract-related claims against Cordis in the Promus litigation, and Abbott cannot plausibly argue otherwise. (See Abbott Br. at 24.) Abbott’s claim preclusion argument fails. Undoubtedly recognizing that none of the traditional preclusion doctrines apply here, Abbott summons the “Kessler doctrine” as a last resort, arguing that it “fills the gap between . . . preclusion doctrines . . . allowing an adjudged non-infringer to avoid repeated harassment for continuing its business as usual post-final judgment in a patent action where circumstances justify that result.” (Abbott Br. at 35-36 (quoting Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1056 (Fed. Cir. 2014)).) The Kessler doctrine is a right that attaches to a “noninfringing product” and operates to “prevent patent owners from undermining adverse judgments by relitigating infringement claims against customers who use the product at issue.” MGA, Inc. v. Gen. Motors Corp., 827 F.2d 729, 734 (Fed. Cir. 1987) (emphasis added). These circumstances are simply not present here. As discussed above, Promus I and Promus II together hold only that Boston Scientific’s sales of the Promus stents at issue in that litigation do not infringe the particular Fischell patents that were asserted in that litigation. Abbott is not and has never been adjudged a “non-infringer” on any, let alone all of the Fischell patents that are within the scope of the license agreements at issue in this case, including the ‘817 patent at issue in the Promus litigation, as well as the ‘856 patent and the Fischells’ foreign patents which have never been litigated. Abbott cites no case, nor could it, that permits expanding the Kessler doctrine to parties and patents that have not been before a court. 5. The Federal Circuit’s vacatur of the District Court’s nullification finding also effectively vacated the claim construction on which Abbott wrongly relies The Federal Circuit’s summary affirmance in Promus II specifically vacated the district court’s nullification of three dependent claims of the ‘817 patent. Abbott wrongly asserts this as evidence that the Federal Circuit affirmed every aspect of the district court’s reasoning except for Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 31 of 36 PageID: 1770 27 nullification of these dependent claims. (Abbott Br. at 21-22.) But in fact, the Federal Circuit’s vacatur further undermines Abbott’s preclusion arguments based on claim construction of the ‘817 patent and strongly supports the Fischells’ position that the Federal Circuit’s affirmance of the district court’s noninfringement judgment was based on patent exhaustion alone. In her Promus I decision, Judge Robinson was explicit that “nullification” of claims 14- 16 was mandated by her claim construction: “The court, therefore, construes ‘a circumferentially extending turn back portion’ consistent with the only plausible construction supported by figure 8 of the specification . . . . In doing so, the court nullifies dependent claims 14-16 . . . .” Promus I, 868 F. Supp. 2d at 356-57 (emphasis added). And, while claim construction was not essential to the district court’s judgment of noninfringement (since noninfringement was first found on the basis of patent exhaustion), it was essential to its finding that the Boston Scientific Promus stent design did not contain every element of the ‘817 patent claims as construed. Id. at 358 (“BSC’s noninfringement argument with respect to the ‘817 patent was contingent upon the court’s defining ‘circumferentially extending turn back portion’ limitation of the claims as ‘undulating.’”). As a matter of logic, then, the Federal Circuit’s vacatur of the nullification ruling (with which Judge Robinson’s claim construction was fundamentally incompatible) necessarily vacated her claim construction as well as the noninfringement opinion based on that claim construction. This is precisely what the Fischells pled. (See SAC, ¶ 51.) The proper reading of Promus II is that, in vacating the finding of claim nullification, the Federal Circuit also vacated the Promus I claim construction by “necessary implication.” TecSec, 731 F.3d at 1342. This fact should lead the Court here to reject outright Abbott’s argument that the Court must follow Judge Robinson’s (now-vacated) claim construction of the ‘817 patent when construing the ‘856 patent. And all of Abbott’s inaccurate explication of the Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 32 of 36 PageID: 1771 28 Promus decisions is still both improper on a motion to dismiss (see Section C.2, infra) and irrelevant to the Fischells’ claims against Cordis here (see Sections A.1 and A.2, supra). C. Multiple Fischell Patents Have Not Been Previously Litigated and Abbott’s Prospective Challenge to Them Cannot Be Resolved on a Motion to Dismiss 1. The Fischells licensed numerous royalty bearing patents to Cordis that were sublicensed to Abbott and have never been adjudicated Throughout its brief, Abbott uses the phrase “Fischell patents” to refer to the three patents that were asserted in the Promus case and uses the same phrase to incorrectly suggest that these are the same “Fischell patents” at issue in the 1999 Fischell-Cordis Agreement. In fact, that Agreement—operative here—covers over two dozen issued U.S. and foreign patents licensed to Cordis, plus “all future patent applications related thereto and issued patents issued therefrom, together with patents and patent applications (including continuations, continuations- in-part, divisions, re-examinations and reissues) bearing the same worldwide priority date (at least part of which is prior to the Effective Date) as any of the patents or applications listed on Appendix A.” (See SAC, Ex. A, ¶ 1.7; Appendix A and Amended Appendix A.) Even Abbott does not assert that all of the Fischell patents were previously litigated, and they all maintain the presumption that they are valid and Royalty Bearing. If Abbott truly seeks a judgment that it owes no royalties to Cordis under the 2004 Cordis-Guidant Agreement in which it expressly agreed its stents were Royalty Bearing, Abbott will have to challenge the validity of all of the Fischells’ patents, which it plainly has not even attempted to do in its Motion. The Court should order the Fischells’ claims against Cordis to proceed. 2. Even if it was relevant, Abbott cannot prove noninfringement with respect to the Fischells’ ‘856 patent via a Rule 12(b)(6) motion to dismiss Lastly, even if the Fischells were required to show that Abbott’s stents practice one or more of the Fischells’ patent claims to receive royalties—and they are not—Abbott’s attempt to Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 33 of 36 PageID: 1772 29 apply the since-vacated Promus I claim construction to the Fischells’ ‘856 patent and prove noninfringement is improper on a motion to dismiss. (See Abbott Br. at 25-28.) After incorrectly arguing that the district court’s claim construction in Promus I is “binding precedent” that was substantively affirmed by the Federal Circuit, Abbott then improperly asks this Court to decide at the pleading stage that the ‘856 patent—which was not asserted in the Promus litigation and has different claim terminology—is in all material respects identical to the patents that were asserted in Promus and then conclude that no Abbott stents practice that patent. (Id.) The Court should reject Abbott’s entreaty to perform claim construction to decide Abbott’s 12(b)(6) Motion. Contrary to Abbott’s assertions, as explained above, the Federal Circuit’s nonprecedential summary affirmance did not in any way endorse the district court’s claim construction—in fact the Federal Circuit actually vacated the dependent claim nullification that was essential to that claim construction. In any case, this Court is not bound by the Promus I court’s now-vacated claim construction of the Fischell patents that were at issue in the Promus litigation; even if it had not been vacated, a sister district court’s construction is to be treated as “merely persuasive authority.” IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 n.1 (Fed. Cir. 2011) (internal citation omitted); FlatWorld Interactives LLC v. Samsung Elecs. Co., Ltd., Civ. A. No. 12-804, 2014 WL 7464143, at *1 (D. Del. Dec. 31, 2014) (finding another district court’s reasoning “persuasive on many disputed terms” but “in some instances [the Court reached] a different conclusion . . . .”). Abbott mischaracterizes the Promus I court’s claim construction as binding on this Court and then stretches that already-incorrect argument even further by arguing that the construction is also applicable to the ‘856 patent.10 10 Even if substantive analysis of a patent infringement claim was proper at this stage, Abbott’s argument is wrong on the merits. For just one example, Abbott’s argument that the ‘856 patent is not “patentably distinct” because the Fischells filed a terminal disclaimer to overcome a Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 34 of 36 PageID: 1773 30 Moreover, Abbott’s invitation to this Court to engage in substantive claim construction to resolve a motion to dismiss would be inappropriate for a defendant to argue at the pleading stage in a patent infringement litigation, let alone for Abbott, a third party intervenor, to assert in the Fischells’ breach of contract case against Cordis. See, e.g., Schreiber v. Eli Lilly & Co., Civ. A. No. 05-2616, 2006 WL 782441, at *4 (E.D. Pa. Mar. 27, 2006) (“[T]he proper time for this Court to address claim construction is not in a motion to dismiss . . . ”) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)); see also Max Sound Corp. v. Google, Inc., Civ. A. No. 14-04412, 2015 WL 2251060, at *4 (N.D. Cal. May 13, 2015) (“A Rule 12(b)(6) motion is not the proper vehicle to examine and interpret the prosecution history . . . .”). The Court should reject Abbott’s irrelevant and improper attempt to argue claim construction at the pleading stage and deny Abbott’s Motion. III. CONCLUSION For the reasons set forth above, the Court should deny Abbott’s Motion to dismiss. “double patenting” objection is refuted by decades of well-established law. (See Abbott Br. at 27.) Indeed, the law is clear that filing a terminal disclaimer in response to a “double patenting” objection does not constitute an admission that the “double patenting” objection has any merit or that the claims are of equal scope. See, e.g., Quad. Envt’l Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870, 874 (Fed. Cir. 1991) (“[A] terminal disclaimer simply serves the statutory function of removing the rejection of double patenting, and raises neither presumption nor estoppel on the merits of the rejection. It is improper to convert this simple expedient of ‘obviation’ into an admission or acquiescence or estoppel on the merits.”) (emphasis added); Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376, 1385 (Fed. Cir. 2007) (“A terminal disclaimer simply is not an admission that a later-filed invention is obvious.”). Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 35 of 36 PageID: 1774 31 Dated: February 28, 2017 Respectfully submitted, FOX ROTHSCHILD LLP By: /s/ Karen A. Confoy ________________ Karen A. Confoy, Esq. Corinne McCann Trainor, Esq. Princeton Pike Corporate Center 997 Lenox Drive, Building 3 Lawrenceville, New Jersey 08648 T: (609) 896-3600 F: (609) 896-1469 kconfoy@foxrothschild.com ctrainor@foxrothschild.com -and- J. Michael Huget, Esq. Sarah E. Waidelich, Esq. HONIGMAN MILLER SCHWARTZ AND COHN, LLP 315 E. Eisenhower Parkway, Suite 100 Ann Arbor, MI 48108 T: (734) 418-4254 F: (734) 418-4201 mhuget@honigman.com swaidelich@honigman.com Jeffrey K. Lamb, Esq. Kimberly L. Rockwell, Esq. HONIGMAN MILLER SCHWARTZ AND COHN, LLP 2290 First National Building 660 Woodward Avenue Detroit, MI 48226 T: (313) 465-7558 F: (313) 465-7559 jlamb@honigman.com krockwell@honigman.com Co-Counsel for Plaintiffs Case 3:16-cv-00928-PGS-LHG Document 96 Filed 02/28/17 Page 36 of 36 PageID: 1775 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY TIM A. FISCHELL, ROBERT E. FISCHELL, and DAVID R. FISCHELL, Plaintiffs, v. CORDIS CORPORATION, Defendant, and ABBOTT LABORATORIES and ABBOTT CARDIOVASCULAR SYSTEMS INC., Intervenors. Civil Action No. 3:16-cv-00928-PGS-LHG (Document Electronically Filed) Returnable: April 3, 2017 Oral Argument Requested DECLARATION OF CORINNE MCCANN TRAINOR, ESQ. J. Michael Huget, Esq. Sarah E. Waidelich, Esq. HONIGMAN MILLER SCHWARTZ AND COHN, LLP 315 E. Eisenhower Parkway, Suite 100 Ann Arbor, MI 48108 T: (734) 418-4254 F: (734) 418-4201 mhuget@honigman.com swaidelich@honigman.com Jeffrey K. Lamb, Esq. Kimberly L. Rockwell, Esq. HONIGMAN MILLER SCHWARTZ AND COHN, LLP 2290 First National Building 660 Woodward Avenue Detroit, MI 48226 T: (313) 465-7558 F: (313) 465-7559 jlamb@honigman.com krockwell@honigman.com Co-Counsel for Plaintiffs Karen A. Confoy, Esq. Corinne McCann Trainor, Esq. FOX ROTHSCHILD LLP Princeton Pike Corporate Center 997 Lenox Drive, Building 3 Lawrenceville, New Jersey 08648 T: (609) 896-3600 F: (609) 896-1469 kconfoy@foxrothschild.com ctrainor@foxrothschild.com Co-Counsel for Plaintiffs Case 3:16-cv-00928-PGS-LHG Document 96-1 Filed 02/28/17 Page 1 of 3 PageID: 1776 2 CORINNE MCCANN TRAINOR, ESQ., pursuant to 28 U.S.C. § 1746, hereby declares as follows: 1. I am an attorney-at-law licensed to practice before this Court and am associated with the law firm of Fox Rothschild LLP, attorneys for Plaintiffs Tim A. Fischell, Robert E. Fischell, and David R. Fischell (collectively, “Plaintiffs”). 2. I submit this Declaration in support of Plaintiffs’ Brief in Opposition to Abbott’s Motion to Dismiss. 3. Attached hereto as Exhibit A is a true and correct copy of the Redacted Opening Brief in Support of Defendants’ Motion for Summary Judgment Re: Invalidity and Authorized Sale in the case of Cordis Corp. v. Boston Scientific Corp., Civ. A. No. 10-39, Dkt. No. 214 (D. Del. Feb. 10, 2012). 4. Attached hereto as Exhibit B is a true and correct copy of the redacted transcript from the May 11, 2012 summary judgment and claim construction hearing in the case of Cordis Corp. v. Boston Scientific Corp., Civ. A. No. 10-39, Dkt. No. 275 (D. Del. Sept. 20, 2012). 5. Attached hereto as Exhibit C is a true and correct copy of the Redacted Opening Brief in Support of Defendants’ Motion for Leave to File an Early Summary Judgment Motion on the Ground of Authorized Sale in the case of Cordis Corp. v. Boston Scientific Corp., Civ. A. No. 10-39, Dkt. No. 142 (D. Del. Aug. 11, 2011). 6. Attached hereto as Exhibit D is a true and correct copy of the Nonconfidential Brief of Defendants-Appellees Boston Scientific Corporation and Boston Scientific Scimed, Inc. in the case of Cordis Corp. v. Boston Scientific Corp., No. 2012-1647, Dkt. No. 25 (Fed. Cir. Jan. 16, 2013). Case 3:16-cv-00928-PGS-LHG Document 96-1 Filed 02/28/17 Page 2 of 3 PageID: 1777 3 I declare that the foregoing statements made by me are true. I am aware that if any of the foregoing statements made by me are willfully false, I am subject to punishment. /s/ Corinne McCann Trainor Dated: February 28, 2017 Corinne McCann Trainor ctrainor@foxrothschild.com Case 3:16-cv-00928-PGS-LHG Document 96-1 Filed 02/28/17 Page 3 of 3 PageID: 1778 EXHIBIT A Case 3:16-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 1 of 28 PageID: 1779 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 1 of 27 PagelD #: 4466 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) CORDIS CORPORATION, ) ) Plaintiff ) ) v. ) ) BOSTON SCIENTIFIC CORPORATION and ) BOSTON SCIENTIFIC SCIMED, INC., ) ) Defendants. ) REDACTED - PUBLIC VERSION C.A. No. 10-39-SLR OPENING BRIEF IN SUPPORT OF DEFENDANTS' MOTION FOR SUMMARY JUDGMENT RE: INVALIDITY AND AUTHORIZED SALE YOUNG CONWAY STARGATT & TAYLOR LLP Karen L. Pascale (#2903) Pilar G. Kraman (#5199) Rodney Square 1000 North King Street Wilmington, DE 19801 (302) 571-6600 OF COUNSEL: Matthew M. Wolf Edward Han John Nilsson Sara P. Zogg ARNOLD & PORTER LLP 555 Twelfth Street, NW Washington, DC 20004 (202) 942-5000 Attorneys for Defendants Boston Scientific Corporation and Boston Scientific Scimed, Inc. February 3, 2012 Redacted Version: February 10, 2012 - L I 3:16-cv-00928-PGS-LHG Docu ent 96-2 Filed 02/28/17 Page 2 of 28 PageID: 1780 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 2 of 27 PagelD #: 4467 TABLE OF CONTENTS I. Preliminary Statement 1 II. Nature And Stage Of The Proceedings 3 III. If "Circumferentially Extending Turn Back Portion" Does Not Have The Same Meaning As "Undulating," Then The Asserted Claims Of The '817 Patent Are Invalid Under 35 U. S .C. §§ 102, 103 3 A. Summary Of Argument 3 B. Statement Of Undisputed Material Facts 4 C. Argument 11 IV. BSC' s Sales of Promus Stents Are Authorized And Non-infringing 14 A. Summary Of Argument 14 B. Statement Of Undisputed Materials Facts 15 1. The License Authorizes Abbott 15 2. Abbott Purchased The Promus Technology From Guidant 16 3. Abbott Sells The Accused Promus Stents To BSC 17 4. Abbott Remains Licensed To The Fischell Patents 17 C. Argument 18 1. Abbott's Sales Of Promus Stents To BSC Are Authorized And Exhaust Cordis's Patent Rights 18 2. The License Does Not Exclude Promus Stents 20 V. Conclusion 22 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 3 of 28 PageID: 1781 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 3 of 27 PagelD #: 4468 TABLE OF AUTHORITIES Cases Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333 (Fed. Cir. 2010) 13, 15 Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347 (Fed. Cir. 2011) 1, 12 Nystrom v. Trex Co., Inc., 374 F.3d 1105 (Fed. Cir. 2004) 11 PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) 12 Quanta Computer, Inc. v. LG Elec., Inc., 553 U.S. 617 (2008) 15, 19, 20 Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir. 2008) 3 Tessera, Inc. v. Int'l Trade Comm'n, 646 F.3d 1357 (Fed. Cir. 2011) 15, 19, 20 United States v. Univis Lens Co., 316 U.S. 241 (1942) 19 Statutes 8 Del. Code § 251 22 Cal. Corp. Code § 1103 23 Ill. Comp. Stat. 805 § 5/11.05 23 ii 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 4 of 28 PageID: 1782 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 4 of 27 PagelD #: 4469 Defendants Boston Scientific Corporation and Boston Scientific Scimed, Inc. (collectively, "BSC") respectfully submit this opening brief in support of their motion for summary judgment that (1) the asserted claims of U.S. Patent No. 6,547,817 ("the '817 patent") are invalid and (2) BSC's sales of Promus stents are authorized. I. PRELIMINARY STATEMENT On March 2, 2012, pursuant to Section III of the Court's Briefing Guidelines in Complex Cases dated July 12, 2011, and the amended scheduling order entered in this case (D.I. 173), BSC's will file a combined opening-answering brief to address BSC's motion for summary judgment of non-infringement (an issue as to which BSC does not carry the burden of proof). In that brief, BSC will explain (as it has in its claim construction briefs) why this Court's claim construction in Cordis Corp. v. Boston Scientific Corp., et al., Nos. 97-550-SLR, 97-700-SLR, 98-19-SLR, 98-197-SLR (D. Del.), which was affirmed by the Federal Circuit in Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347 (Fed. Cir. 2011) (collectively, "Fischell l")1, and its application of that construction to the Nir stent, are fully dispositive of the infringement claims here. To put it simply, like the connecting elements of the Nir stent at issue in Fischell I, the connecting elements in BSC's Promus stent are not "undulating" — i.e., they do not "rise and fall in waves, having at least a crest and a trough." This brief addresses two additional grounds for summary judgment. The first is directed to the asserted claims of the '817 patent (claim 1 and five of its dependents). Unlike the asserted claims of the '604 and '240 patents, the asserted claims of the '817 patent do not use the term 1 The patents-in-suit — U.S. Patent No. 6,086,604 (the "`604 patent"), the '817 patent, and U.S. Patent No. 6,716,240 (the '240 patent") (collectively, the "Fischell patents") — are all purported continuations of a patent application filed on February 25, 1994. This earlier patent application resulted in U.S. Patent No. 5,643,312 (the "`312 patent") which, together with U.S. Patent No. 5,879,370 (the '370 patent," also a continuation of the February 1994 application), was at issue in Fischell I. 1 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 5 of 28 PageID: 1783 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 5 of 27 PagelD #: 4470 "undulating" to describe the connecting element in the claimed stent; they require instead a connecting longitudinal with a "circumferentially extending turn back portion." This "turn back" language, however, appears nowhere in the specification or in any of the prosecution histories of the prior Fischell patents. The language was added by amendment in 2002 — eight years after the original application in the Fischell patent chain and shortly after this Court issued its construction of "undulating" in Fischell I. The addition of the "turn back" language in the '817 patent was a transparent attempt by Plaintiff Cordis Corporation ("Cordis") to escape the effect of the Court's construction of "undulating" in the predecessor patents. The applicable case law, however, presents Cordis with an unavoidable dilemma: either (1) "circumferentially extending turn back portion" is to be interpreted congruently with "undulating," in which case Promus does not infringe, or (2) the claims are entitled to a priority date no earlier than June 16, 2000 (the filing date of the '817 patent application), in which case all of the elements of the asserted claims of the '817 were already disclosed in U.S. Patent No. 6,183,506 ("Penn"). In other words, if "circumferentially extending turn back portion" means what Cordis now contends, the claims are indisputably invalid under 35 U.S.C. § 102. The second ground for summary judgment here is dispositive of the entire action, regardless of any ruling on any issue of infringement or validity. Under established Supreme Court and Federal Circuit precedent, BSC' s sales of Promus stents are authorized and non- infringing. Abbott Laboratories, Inc. ("Abbott"), the company that manufactures Promus stents and sells them to BSC, obtained a license to the Fischell patent family from Cordis in 2001 — a license that remains in effect today. Because Abbott's sales to BSC are authorized, they exhaust Cordis's patent rights. 2 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 6 of 28 PageID: 1784 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 6 of 27 PagelD #: 4471 II. NATURE AND STAGE OF THE PROCEEDINGS Cordis filed this action on January 15, 2010, alleging that BSC's sales of Promus drug- eluting stents infringe the Fischell patents. (D.I. 1.)2 BSC answered the complaint on March 11, 2010, asserting numerous defenses, including invalidity and non-infringement of the asserted claims, as well as the defense that its sales of Promus are authorized. (D.I. 8.) The parties have completed fact and expert discovery and claim construction briefing. The claim construction and summary judgment hearing is scheduled for May 9, 2012; the pretrial conference is set for June 21, 2012; and trial is scheduled to commence on July 30, 2012. (Id.) III. IF "CIRCUMFERENTIALLY EXTENDING TURN BACK PORTION" DOES NOT HAVE THE SAME MEANING AS "UNDULATING," THEN THE ASSERTED CLAIMS OF THE '817 PATENT ARE INVALID UNDER 35 U.S.C. §§ 102, 103 A. Summary Of Argument As the Federal Circuit has explained, a claim in a later application receives the benefit of the filing date of an earlier application only if "the disclosure in the earlier application meets the requirements of 35 U.S.C. § 112, ¶ 1, including the written description requirement, with respect to that claim." Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326 (Fed. Cir. 2008). Because there is absolutely no support in the written description of the original Fischell application for the broad "turn back" limitation added to the claims of the '817 patent in 2002, those claims cannot obtain the benefit of the 1994 filing date of the original application. With a priority date of October 18, 2002 (the date of the amendment), or even of June 16, 2000 (the filing date of the '817 patent), the claims are demonstrably invalid. Every element of those 2 Despite numerous requests from BSC that Cordis reduce the number of claims in dispute, Cordis continues to assert 24 claims: claim 1 of the '604 patent; claims 1, 3, 6, 9, 11, 13 and 14 of the '817 patent, and claims 19, 21, 25, 26, 27, 31, 32, 34, 36, and 58-64 of the '240 patent (collectively, the "asserted claims"). 3 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 7 of 28 PageID: 1785 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 7 of 27 PagelD #: 4472 claims is clearly disclosed in the prior art and, in particular (for purposes of the present motion), in the Penn patent. B. Statement Of Undisputed Material Facts The '817 patent was filed on June 16, 2000, and issued on April 15, 2003. (D.I. 183-4 [`817] at JA-30.) It is ostensibly a continuation of the '604 patent, which was filed on March 5, 1999, and issued on July 11, 2000. (Id.) The '604 patent purports to be a continuation of Application No. 08/864,221, which was filed on May 28, 1997, and issued as the '370 patent, which in turn claims to be a continuation of Application No. 08/202,128, which was filed on February 25, 1994, and issued as the '312 patent. (Id. at JA-36, col. 1:4-9.) The specifications of the '312, '370, '604, '817, and '240 patents are identical for all relevant purposes; the only differences are (i) the title of the '312 patent, which is "Stent Having a Multiplicity of Closed Circular Structures," (ii) the Abstracts, (iii) the claims, (iv) the cited prior art, and (v) the recitation of related patents starting at column 1, line 1.3 (D.I. 183-1 [` 312]; D.I. 183-2 [` 370]; D.I. 183-3 [`604]; D.I. 183-4 [`817]; D.I. 183-5 [240].) Claim 1 of the '817 patent requires: A generally cylindrical stent for delivery to a coronary artery, said stent having a first pre-deployment diameter and a second deployed diameter, said stent having a circumference, and a longitudinal axis, said stent having sufficient flexibility to permit percutaneous delivery to a curved coronary artery; said stent in its first diameter comprising: 3 The specification of the '817 and '240 patents include additional language at col. 4:54-59 ("Another method to form the pre-deployment stent is by etching the correct pattern onto a thin, flat metal plate, then forming a tube from that plate and then making a longitudinal to weld to form a cylindrically shaped structure which is, in fact, the pre-deployment stent structure 20 shown in Fig. 9.") that does not appear in the '604 patent specification. (Compare D.I. 183-4 and D.I. 183-5 with D.I. 183-3 at col. 4.) This language was rejected by the PTO in response to a request for a certificate of correction for the '604 patent. (D.I. 184-5 [`604 file history] at JA- 1640-41, JA-1651-52.) The additional language was included in the '312 and '370 patents via a certificate of correction. (D.I. 183-9 [`312 file history] at JA-336; D.I. 183-14 ['370 file history] at JA-646.) 4 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 8 of 28 PageID: 1786 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 8 of 27 PagelD #: 4473 at least two longitudinally spaced apart circumferential rings having closed ends, each of said circumferential rings defining a portion of the circumference of the stent, each of said circumferential rings having at least two peak segments and at least two valley segments; and at least one longitudinally extending connector having a first end portion and a second end portion, said first end portion being fixedly connected to a first of said circumferential rings and said second end portion being fixedly connected to a circumferential ring adjacent to said first circumferential ring, said connector having at least one circumferentially extending turn back portion between its first and second end portions that can expand or contract in length as measured by the straight line distance between its first and second end portions, while being passed through a curved coronary artery. (D.I. 183-4 [`817] at JA-37-38, col. 4:66-5:22 (emphasis added).) Cordis has admitted — through the testimony of its expert, Dr. Nigel Buller — that, even prior to the filing of the original application in 1994, circumferential rings having closed ends were publicly known to those practicing interventional cardiology: Q. You would agree that, as understood by Cordis, circumferential rings having closed ends were publicly known prior to the Fischell patents? A. Oh, well known, to intervention — I mean, when you say publicly, I'm- but to interventional cardiologists, yes, they were well known. (Zogg Decl.,4 Ex. 1 [Buller Tr.] at 77:8-13.) Cordis has also admitted that a circumferential element extending around the circumference of the stent was publicly known to those of skill in the art in 1994: Q. So would a circumferential element extending around the circumference of the stent, would that have been well known to one of skill in the art in 1994? A. Yes. 4 Exhibits referenced herein are attached to the Declaration of Sara P. Zogg In Support Of Defendants' Motion for Summary Judgment ("Zogg Decl."), filed herewith. 5 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 9 of 28 PageID: 1787 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 9 of 27 PagelD #: 4474 (Id. at 78:14-17.) Cordis further admitted that it was known that the circumferential ring could have "at least two peak segments and at least two valley segments": Q. [I]t also would have been known at that time that each of the rings could have at least two peak segments and at least two valley segments, correct? A. Yes, with all your provisos, yes, I agree. (Id. at 115:18-22.) Cordis has admitted that a longitudinally extending connector would have been well known to one of skill in the art in 1994: Q. And would a longitudinally extending connector have been well known to one of skill in the art in 1994? A. Yes, the use of all of these things, the concept of all of these things on their own was well known. (Id. at 78:22-79:3.) And Cordis has admitted that one of skill in the art in 1994 would have known of "longitudinally extending connectors having a first end portion and a second end portion, said first end portion being fixedly connected to a first of said circumferential rings and said second end portion being fixedly connected to a circumferential ring adjacent to said first circumferential ring": Q. [I]t would have been known in February of 1994 that a stent could contain at least one longitudinally extending connector having a first end portion and a second end portion, correct? A. Correct. Q. And it would have been known that the end portions of such a connector could be attached to adjacent circumferential rings, correct? A. Correct. (Id. at 115:24-116:8.) Claim 3 of the '817 patent requires all the elements of claim 1 and also requires "at least three circumferentially spaced connectors connect said first of said circumferential rings and a circumferential ring adjacent to said first circumferential ring." (D.I. 183-4 [`817] at JA-38, col. 6 9-SL - l Ias 3 6 928 PGS LHG 96-2 Filed 02/28/17 Page 10 of 28 PageID: 1788 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 10 of 27 PagelD #: 4475 5:28-31.) Cordis has admitted that it would have been known in 1994 that one could have at least three circumferentially spaced connectors that connect adjacent circumferential rings, as recited in dependent claim 3: Q. Now, looking at dependent claim 3, it also would have been known, putting aside the particular geometry of the connectors, that one could have at least three circumferentially spaced connectors that connect adjacent circumferential rings, correct? A. Yes. (Zogg Decl., Ex. 1 [Buller Tr.] 116:9-14.) Claim 6 requires all the elements of claim 1 and also requires "at least one of said first and second end portions of said connector includes a straight segment that is substantially parallel to the longitudinal axis of the stent." (D.I. 183-4 [`817] at JA-38, col. 5:35-37.) Cordis has admitted that it would have been known in 1994 that a connector in a stent could have first and second end portions with straight segments substantially parallel to the longitudinal axis of the stent: Q. And looking at dependent claim 6, in February of 1994, it also would have been known that one could have first and second end portions of a connector that included a straight segment substantially parallel to the longitudinal axis of the stent, correct? A. Yes, in that you can divide a straight structure into sort of many straight structures, yes. (Zogg Decl., Ex. 1 [Buller Tr.] at 116:15-22.) Claim 9 requires all the elements of claim 1 and also requires "the first end portion of at least one of said connectors is connected to a peak segment of one circumferential ring and the second end portion of said connector is connected to a valley portion of an adjacent circumferential ring." (D.I. 183-4 [`817] at JA-38, col. 6:10-15.) Cordis has admitted that the elements of dependent claim 9 would have been known to one of ordinary skill in the art: 7 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 11 of 28 PageID: 1789 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 11 of 27 PagelD #: 4476 Q. [] Dependent claim 9 recites, "The stent, as set forth in claim 1, wherein the first end portion of at least one of said connectors is connected to a peak segment of one circumferential ring, and the second end portion of said connector is connected to a valley portion of an adjacent circumferential ring." Do you see that? A. Yes. Q. That sort of peak-to-valley configuration claimed in claim 9, that would have been known to one of ordinary skill in the art in February of 1994, correct? A. Yes, with the same proviso as I put, that this is requiring you to kind of divide up connectors, and you have to have a reason to — a sensible, logical reason to. They would understand that. But connectors that went from peak to valley were known. (Zogg Decl., Ex. 1 [Buller Tr.] at 117:8-24.) Claim 11 requires all the elements of claim 1 and also that "at least one of said circumferential rings is formed integral with at least one of said connectors." (D.I. 183-4 [`817] at JA-38, col. 6:21-23.) Cordis has admitted that the elements of that dependent claim would have been known to one of ordinary skill in the art: Q. Now, looking at dependent claim 11, dependent claim 11 recites, "The stent, as set forth in claim 1, wherein at least one of said circumferential rings is formed integral with at least one of said connectors." Do you believe that what's discussed in dependent claim 11 also would have been known to one of skill of art in February of 1994? A. Yes. (Zogg Decl., Ex. 1 [Buller Tr.] at 118:1-9.) Claim 13 requires all the elements of claim 1 and also requires "said stent is formed as an integral structure from a pre-existing metal tube." (D.I. 183-4 [`817] at JA-38, col. 6:27-29.) Cordis has also admitted that the elements of dependent claim 13 would have been known to one of ordinary skill in the art: 8 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 2 of 28 PageID: 1790 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 12 of 27 PagelD #: 4477 Q. And it was also well known, was it not, in February of 1994, that you could make a stent as an integral structure from a preexisting metal tube, as recited in dependent claim 13? A. Yes. Again, it was known. (Zogg Decl., Ex. 1 [Buller Tr.] at 118:23-119:3.) The only elements of the asserted claims that Cordis insists were not disclosed in the prior art in 1994 are: (1) the requirement of claim 1 that the claimed longitudinally extending connector have "at least one circumferentially extending turn back portion between its first and second end portions that can expand or contract in length as measured by the straight line distance between its first and second end portions"; and (2) the requirement of dependent claim 14 that the "turn back portion of said connector includes at least one generally U-shaped segment."5 (See D.I. 183-4 [` 817] at JA-38, col. 5:17-22, col. 5:31-33.) The original claims of the application that issued as the '817 patent, however, described the longitudinally extending connector as having "undulating sections" — not as merely having a "circumferentially extending turn back portion." (D.I. 184-6 [817 file history] at JA-1733-36.) In October of 2002, Cordis cancelled the original claims and submitted new claims that included the "turn back portion" language. (D.I. 184-14 [` 817 file history] at JA-2250-51.) The PCT application that led to Penn, U.S. Patent No. 6,183,506, was filed on March 5, 1997 — more than three years before the filing of the application that would issue as the '817 patent and more than five years before the amendment that added the language "at least one circumferentially extending turn back portion between its first and second end portions that can expand or contract in length as measured by the straight line distance between its first and second 5 Claim 14 requires all the elements of claim 1 and also requires "said turn back portion of said connector includes at least one generally U-shaped segment." (D.I. 183-4 [` 817] at JA-38, col. 5:31-33.) 9 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 13 of 28 PageID: 1791 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 13 of 27 PagelD #: 4478 end portions" to the claims of the '817 patent. (See Zogg Decl., Ex. 2 [Penn] at (22), (87), (45).) Penn discloses every element of the asserted claims of the '817 patent, namely: • a stent with longitudinally extending connectors having at least one circumferentially extending turn back portion between its first and second end portions. (Id. at Figs. 8-10, 12f, 12g.) • the "turn back portion" of the longitudinally extending connector will expand or contract in length as measured by the straight line distance between its first and second end portions. (Id. at col. 3:19-33.) • A stent with longitudinally extending connectors having at least one circumferentially extending turn back portion that has at least one generally U- shaped segment. (Id. at Figs. 8-10, 12f, 12g.) • "[a] generally cylindrical stent for delivery to a coronary artery, said stent having a first pre-deployment diameter and a second deployed diameter, said stent having a circumference, and a longitudinal axis, said stent having sufficient flexibility to permit percutaneous delivery to a curved coronary artery." (Id. at col. 2:23-34.) • "at least two longitudinally spaced apart circumferential rings having closed ends, each of said circumferential rings defining a portion of the circumference of the stent, each of said circumferential rings having at least two peak segments and at least two valley segments." (Id. at Figs. 1-10.) • "at least one longitudinally extending connector having a first end portion and a second end portion, said first end portion being fixedly connected to a first of said circumferential rings and said second end portion being fixedly connected to a circumferential ring adjacent to said first circumferential ring." (Id. at Figs. 1-10.) • a stent in which at least three circumferentially spaced connectors connect a circumferential rings to a circumferential ring adjacent to said first circumferential ring. (Id. at Figs. 1-11.) • a stent with a connector having a "turn back portion" in which at least one of said first and second end portions of said connector includes a straight segment that is substantially parallel to the longitudinal axis of the stent. (Id. at Figs. 8-10.) • a stent in which the end portion of at least one connector is connected to a peak segment of one circumferential ring and the other end portion of the connector is connected to a valley portion of an adjacent circumferential ring. (Id. at Figs. 1- 11.) • a stent in which "at least one of said circumferential rings is formed integral with at least one of said connectors." (Id. at col. 6:17-19; 12:47-53.) 10 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 14 of 28 PageID: 1792 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 14 of 27 PagelD #: 4479 • a stent "formed as an integral structure from a pre-existing metal tube." (Id. at 12:47-53.) Cordis's expert, Dr. Buller, has offered no opinion as to why Penn would not render the claims of the '817 patent invalid if it is prior art to them. (Zogg Decl., Ex. 1 [Buller Tr.] at 242:7-14; see also Zogg Decl., Ex. 3 [Cordis's Interrog. Resp.] at No. 9 & Ex. B at 97-98 (failing to identify any of the '817 claim limitations).) C. Argument For the reasons set forth in its claim construction briefs, BSC submits that the "turn-back portion" in the connecting elements of the stent of claim 1 of the '817 patent should be interpreted to have the same meaning as "undulating" or "undulation" (the phrase describing the shape of the "connector" or "longitudinal" in every other claim of the Fischell patents) — i.e., it must "rise and fall in waves, having at least a crest and a trough." (See D.I. 180 [BSC Answering Br.] at 15-19.) This is the only ostensibly "novel" aspect of the asserted claims, and the patents simply do not depict (or even suggest) any other geometry for the "connectors" or "longitudinals" between circumferential elements. See Nystrom v. Trex Co., Inc., 374 F.3d 1105, 1112 (Fed. Cir. 2004) (restricting the claim term "board" to wooded material, as disclosed in the specification, even though dictionary definitions indicate that a "board" may be made from materials other than wood). As shown in BSC's claim construction briefs — and as will be further shown in BSC's motion for summary judgment of non-infringement — under this claim construction, Cordis cannot prove infringement. Specifically, the accused Promus stent's connecting element does not "rise and fall in waves, having at least a crest and a trough." Like Nir, after forming one trough (or crest) it merely "levels out." See Cordis, 658 F.3d at 1358 (Nir's connecting elements are not "undulating" because they "merely level out"). 11 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 15 of 28 PageID: 1793 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 15 of 27 PagelD #: 4480 Cordis, however, takes the position that, regardless of whether Promus's connecting element meets the "undulating" limitation, it would still fall within the claims of the '817 patent because it contains a "circumferentially extending turn back portion." Cordis insists that a "turn back portion" need not rise and fall in waves, having at least a crest and trough; it need only "extend in the direction of the stent's circumference." (See D.I. 185 [Cordis's Reply Br.] at 8.) Under this construction, a "turn back portion" is clearly a broader concept than an "undulation," encompassing many more variations in geometry. If Cordis is right in this regard, then the claims of the '817 patent are invalid. As explained in BSC's claim construction briefs, to be entitled to the original February 25, 1994 priority date, the elements of the claims of the '817 patent must be described in the original application's specification. See PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) ("[T]o satisfy the written description requirement, 'the missing descriptive matter must necessarily be present in the [original] application's specification such that one skilled in the art would recognize such a disclosure') (internal citation omitted). The "circumferentially extending turn back portion" language, however, appears nowhere in that specification. (See generally D.I. 183-4 [` 817] at JA-36-37.) Nor does it appear in any of the prosecution histories of the prior Fischell patents. Under the controlling case law, including the Federal Circuit's decision in Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333 (Fed. Cir. 2010), the '817 patent claims are not entitled to the priority date of the original application. In Anascape, the original application described a video game controller with "an input member capable of movement in six degrees of freedom." In the subsequent application, this limitation was removed "and new claims were provided of commensurately broadened scope." The Federal Circuit held that "[t]his is classical new 12 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 16 of 28 PageID: 1794 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 16 of 27 PagelD #: 4481 matter." Id. at 1338 (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008)). The Federal Circuit further instructed that "a patentee [is not] presumed to support variants that are not described." Id. at 1339. Just like the patentee in Anascape, Cordis sought to broaden the claim language in the `817 application beyond the disclosure of the original Fischell application. Thus, if Cordis is now correct that a "turn back portion" in the claims of the '817 patent is not limited to an "undulation," but instead may be interpreted and applied more broadly, then the claims are entitled to a priority date no earlier than June 16, 2000 (the filing date of the '817 patent application). With that priority date, the claims are indisputably invalid. Cordis has admitted that none of the claim elements other than "turn-back portion" were novel, even in 1994. (See Part III.B, supra.) Moreover, it is undisputed that the Penn patent expressly discloses every element of the claims, including the purportedly novel "turn-back portion." Shown below are just a sampling of Penn's non-linear connecting elements, all of which would be "turn-back portions" under Cordis's construction: 13 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 17 of 28 PageID: 1795 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 17 of 27 PagelD #: 4482 (Zogg Decl., Ex. 2 at Fig. 12a-12i.) Moreover, the Penn patent expressly shows the manner in which the connectors affect the flexibility of the stent. (Id. at Fig. 11.) As described in Penn, "a first longitudinal strut disposed at a tangent of the bend (i.e., in two dimensions) will expand in response to the bending moment. In contrast, a second longitudinal strut disposed diametrically opposite ... the first longitudinal strut will compress in response to the bending moment." (Id. at col. 3:23-29.) Penn therefore indisputably discloses the structural and functional elements of the asserted claims of the '817 patent. Thus, those claims, like those in Anascape, are invalid. See Anascape, 601 F.3d at 1341 ("Since the '700 claims are not entitled to the '525 filing date of July 5, 1996, the judgments of validity and infringement cannot stand, for Anascape conceded that the Sony prior art anticipates the '700 claims if not so entitled."). IV. BSC'S SALES OF PROMUS STENTS ARE AUTHORIZED AND NON- INFRINGING A. Summary Of Argument Even if Cordis could somehow prove that the asserted claims of the Fischell patents are valid and cover the Promus stent, BSC' s sales are authorized and non-infringing as a matter of 14 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 18 of 28 PageID: 1796 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 18 of 27 PagelD #: 4483 law. In 2001, Cordis entered into a license agreement with Abbott, the company that manufactures Promus stents and sells them to BSC. That agreement expressly granted Abbott broad rights (Zogg Decl., Ex. 4 at Art. II.) Abbott's sales of Promus to BSC are thus authorized and, under Quanta Computer, Inc. v. LG Elec., Inc., 553 U.S. 617 (2008), and Tessera, Inc. v. Int'l Trade Comm'n, 646 F.3d 1357 (Fed. Cir. 2011), exhaust Cordis's patent rights with respect to the Promus stents. To date, Cordis has declined to confront the Abbott license directly. Instead, it insists (incorrectly) that Abbott's purchase of the cardiology business of Guidant Corporation ("Guidant") in 2006, through which Abbott obtained the technology, Accordingly, the parties' dispute turns on a purely a legal issue — Abbott's sales of Promus to BSC are within the scope of the license. Summary judgment should therefore be entered in BSC's favor. B. Statement Of Undisputed Materials Facts 1. The License Authorizes Abbott In June 2001, Cordis and Abbott entered into a license agreement that granted Abbott broad rights to make and sell products covered by the Fischell Patents: 15 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 19 of 28 PageID: 1797 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 19 of 27 PagelD #: 4484 (Zogg Decl., Ex. 4 [License] at Art. II (emphasis added).) The license broadly defines as follows: There is no dispute that Abbott is licensed to all three of the Fischell Patents. (See id., Schedule 1.14 Zogg Decl., Ex. 5 [Coletti Tr.] at 52:5-53:3 54:24-55:11 ) The license (see, e.g., id. at 54:7-23 57:15-58:5 IIIIII IIIIIIIIIIIIIIIII), nor does it (See generally Zogg Decl., Ex. 4.) 2. Abbott Purchased The Promus Technology From Guidant Just before Guidant merged with BSC in 2006, Guidant sold its cardiology business to Abbott. Among other assets included in the sale, 6 ACS developed the Multi-Link family of stents. Multi-Link Vision, the bare metal version of Promus, is the seventh generation stent in the Multi-Link family 16 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 20 of 28 PageID: 1798 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 20 of 27 PagelD #: 4485 . (Zogg Decl., Ex. 6 [Purchase Agreement] at 1 112-2; id. at 2, Article 1 § 1.01.) ACS remains an entity incorporated under the laws of the State of California, while Abbott remains a separate corporate entity under the laws of the State of Illinois. (Zogg Decl., Ex. 7; Zogg Decl., Ex. 8.) Neither company filed notices of a merger or consolidation in their respective state of incorporation, nor has either amended their corporate by-laws to reflect a merger or consolidation. (See, e.g., Zogg Decl. ¶ 8.) 3. Abbott Sells The Accused Promus Stents To BSC Abbott makes and sells the accused Promus stents pursuant to the terms set forth in a January 8, 2006 Transaction Agreement. 7 (Zogg Decl., Ex. 9 [Transaction Agreement] at § 5.07(a) id. § 5.07(h) Zogg Decl., Ex. 10 [Devore Tr.] at 96:9-11 IIIIIIIIIIIIIIIIIIII D.I. 8 [Answer] In 5, 10.) In turn, BSC resells these stents to its global customers (e.g., hospitals) for application in medical procedures.8 4. Abbott Remains Licensed To The Fischell Patents Cordis does not dispute that Abbott's license remains in effect. Cordis's corporate representative testified that 7 Abbott makes identical stents for its own use, selling them under the label Xience V to customers in Europe and the United States. (Zogg Decl., Ex. 11 [Svensson Tr.] at 19:19-23.) 8 When BSC and Abbott executed the Transaction Agreement in 2006, the United States Food and Drug Administration ("FDA") had yet to approve the Promus stent for domestic sale and use. BSC did not introduce the Promus stent to the United States market until the middle of 2008. (See D.I. 8 [Answer] ¶ 10.) 17 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 21 of 28 PageID: 1799 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 21 of 27 PagelD #: 4486 * * * * * * (Zogg Decl., Ex. 5 [Coletti Tr.] at 81:13-20, 81:25-82:7 (objections omitted), 83:15-18; id. at 82:8-83:11 .) In the event that a dispute arises concerning the terms of the license or the parties' rights and obligations under the license, (Zogg Decl., Ex. 4 [License] § 10.9) (Id. § 10.8 11111111111111.1111111 .) To date, (Zogg Decl., Ex. 5 [Coletti Tr.] at 75:1-5, 83:19-21.) C. Argument 1. Abbott's Sales Of Promus Stents To BSC Are Authorized And Exhaust Cordis's Patent Rights Article II of the Abbott's license (D.I. 183-1 [License] at Art. IL) These rights are broad, they remain in effect, and they completely exhaust any patent rights that Cordis has in the Promus stents. 18 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 22 of 28 PageID: 1800 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 22 of 27 PagelD #: 4487 The doctrine of patent exhaustion, also known as the "first sale" doctrine, has long been applied by courts "to limit the patent rights that survive the initial authorized sale of a patented item." Quanta, 553 U.S. at 621. The doctrine provides that an "initial authorized sale [by a patent licensee] of a patented item terminates all patent rights to that item." Id. at 625; see also id. at 638 (a patent license "exhausts the patent holder's rights and prevents the patent holder from invoking patent law to control postHsale use of the article"); United States v. Univis Lens Co., 316 U.S. 241, 251 (1942). This longstanding doctrine protects not only licensees from infringement claims, but also downstream purchasers who resell or use the licensed products. Quanta, 553 U.S. at 636-38 (dismissing infringement action because initial sales of products were authorized pursuant to a license); Tessera, 646 F.3d at 1369-70 (same). Abbott's license is similar in scope to the license at issue in Quanta. There, the patentee LG Electronics licensed a portfolio of patents to Intel, and granted Intel unrestricted rights to make, use, sell, offer to sell, import or otherwise dispose of products practicing the patents. Quanta, 553 U.S. at 623, 637. Pursuant to that license, Intel developed microprocessors and chipsets that substantially embodied LG Electronics' patents, and sold those products to Quanta, a company that manufactured and sold computers using the parts it purchased from Intel in combination with parts it had purchased elsewhere. Id. at 624, 638. The Supreme Court found that Intel's license exhausted LG Electronics' interest in products incorporating Intel's microprocessors and chipsets and barred LG Electronics from asserting infringement against Quanta. Id. at 636-38 (stating that, once a licensee makes an authorized sale of a product covered by the licensed patents, the patentee is barred from furthering "assert[] its patent rights with respects to the patents substantially embodied by those products"). 19 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 3 of 28 PageID: 1801 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 23 of 27 PagelD #: 4488 The Federal Circuit's Tessera opinion is also squarely on point and further precludes Cordis's claims against BSC. In that case, Tessera granted a number of broad licenses to Tessera's patents that permitted the licensees to "sell ... and/or offer for sale" products embodying the licensed patents, in exchange for an upfront fee and running royalty payments. Tessera, 646 F.3d at 1362-63. The licensees sold products covered by the licenses to its customers, who imported the products into the United States for resale. Id. at 1360, 1362. Consistent with the Supreme Court's Quanta decision, the Federal Circuit held that Tessera's patent rights in the accused products were exhausted by its licensees' authorized sales, and that Tessera could not maintain its infringement claims against its licensees' purchasers. Id. at 1369- 70 (rejecting argument that the licensees' failure to pay royalties converted an authorized sale into an unauthorized sale, and noting that "[n]othing in the [licenses] limited the licensee's ability to sell the accused products"). Quanta and Tessera mandate summary judgment in BSC's favor that its sales of Promus are authorized and non-infringing. Cordis authorized Abbott to sell any products covered by the Fischell patents to any party without restriction, and Abbott's first sales to BSC exhaust any rights that Cordis may have in the Promus stents. 2. The License Does Not Exclude Promus Stents Cordis's only response to BSC's exhaustion defense is that Abbott's license does not extend to Promus stents because Abbott acquired the Promus technology when it "merged" or "consolidated" with ACS. (See D.I. 145 [Cordis Corporation's Opposition to BSC's Motion for Leave to File an Early Summary Judgment Motion] at 1, 6-7.) Cordis is wrong as a matter of law. The settled legal definitions of "merger" and "consolidation," as well as the undisputed facts of this case, dispose of Cordis's argument entirely. 20 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 24 of 28 PageID: 1802 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 24 of 27 PagelD #: 4489 Section 10.4 of the license provides that, (Zogg Decl., Ex. 4 [License] § 10.4 (emphasis added); see also id. § 1.9 ) This language is clear and unambiguous, and for purposes of deciding this motion, requires only that this Court determine whether Abbott and ACS "merged" or "consolidated" under Delaware law.9 (See id. § 10.8 .) The words "merger" and "consolidation" are terms of art with explicit statutory definitions under Delaware corporate law. A "merger" occurs when two or more existing corporations merge into any single one of the constituent corporations, while a "consolidation" takes place when two or more existing corporations consolidate to form an entirely new corporation. 8 Del. Code § 251(a). Here, the facts establish conclusively that Abbott purchased the assets of Guidant that included ACS (the remainder of Guidant merged with BSC), but that it did not "merge" or "consolidate" with ACS. (Zogg Decl., Ex. 6 [Purchase Agreement] at 1 ¶ 2-2 9 In fact, throughout discovery in this case, Cordis never once proposed alternative definitions for these terms or contended an ambiguity exists as to their meanings. (See D.I. 145 at 4.) To the extent that the Court finds that an ambiguity exists, or concludes as a matter of law that a "merger" or "consolidation" occurred, however, (See D.I. 150 [BSC Reply ISO Mot. For Leave To File Early Summary Judgment] at 5-6; Z Decl., Ex. 4 [License] § 10.9 id. at Schedule 10.9 21 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 25 of 28 PageID: 1803 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 25 of 27 PagelD #: 4490 ; id. at 2, Art. I § 1.01 ) Beyond the plain language of the Purchase Agreement, neither ACS nor Abbott has taken any of the steps required to execute a merger or consolidation under state law, such as executing a merger or consolidation agreement, providing public notice, of modifying their articles of incorporation. See 8 Del. Code § 251(a)-(b) (requiring an agreement of merger or consolidation that is approved by each corporation's board of directors); Cal. Corp. Code § 1103; Ill. Comp. Stat. 805 § 5/11.05. Abbott and ACS remain separate entities and cannot be said to have "merged" or "consolidated" for purposes of Section 10.4. Accordingly, Section 10.4 does not in any way exclude Promus stents or restrict Abbott's authorization to sell Promus to BSC. As discussed in Section IV.C.1, supra, Cordis's claims are exhausted under Quanta and Tessera. V. CONCLUSION For the reasons set forth above, either the term "circumferentially extending turn back portion" has the same scope as "undulating" (and, thus, the '817 claims are not infringed), or else the '817 patent is entitled to a priority that is no earlier than the June 2000 (and, thus, the claims admittedly are invalid under 35 U.S.C. §§ 102, 103 in view of Penn). In addition, the doctrine of patent exhaustion compels judgment that BSC' s re-sales of Promus stents are authorized and non-infringing as a matter of law. Accordingly, summary judgment should be entered in favor of BSC. 22 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 26 of 28 PageID: 1804 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 26 of 27 PagelD #: 4491 YOUNG CONAWAY STARGATT & TAYLOR LLP /s/ Karen L. Pascale February 3, 2012 Karen L. Pascale (#2903) [kpascale@ycst.com] Pilar G. Kraman (#5199) [pkramangyest.com] Rodney Square 1000 North King Street Wilmington, DE 19801 Telephone: (302) 571-6600 Attorneys for Defendants Boston Scientific Corporation and Boston Scientific Scimed, Inc. OF COUNSEL: Matthew M. Wolf Edward Han John E. Nilsson Sara P. Zogg ARNOLD & PORTER LLP 555 Twelfth Street, NW Washington, DC 20004-1206 Telephone: (202) 942-5000 23 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 27 of 28 PageID: 1805 Case 1:10-cv-00039-SLR-MPT Document 214 Filed 02/10/12 Page 27 of 27 PagelD #: 4492 CERTIFICATE OF SERVICE I, Karen L. Pascale, Esquire, hereby certify that on February 10, 2012, I caused to be electronically filed a true and correct copy of the foregoing document with the Clerk of the Court using CM/ECF (which will send notification that such filing is available for viewing and downloading to all registered counsel), and in addition caused true and correct copies of the foregoing document to be served upon the following counsel of record in the manner indicated: By E-Mail Steven J. Balick [sbalickgashby-geddes.com] Lauren E. Maguire [1maguiregashby-geddes.com] Andrew C. Mayo [AMayogashby-geddes.com] ASHBY & GEDDES 500 Delaware Avenue, 8th Floor Wilmington, DE 19801 David T. Pritikin [dpritikingsidley.com] William H. Baumgartner [wbaumgartner@sidley.com] Russell E. Cass [rcass@sidley.com] Linda L. Friedlieb [lfriedlieb@sidley.com] Anthony Balkissoon [abalkissoon@sidley.com] SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 Paul J. Zegger [pzegger@sidley.com] SIDLEY AUSTIN LLP 1501 K Street, N.W. Washington, DC 20005 YOUNG CONAWAY STARGATT & TAYLOR LLP /s/ Karen L. Pascale Karen L. Pascale (#2903) [kpascalegycst.com] Rodney Square 1000 North King Street Wilmington, DE 19899-0391 Telephone: 302-571-6600 Attorneys for Defendants, Boston Scientific Corporation and Boston Scientific Scimed, Inc. 9-SL - l I 3: 6-cv-00928-PGS-LHG Document 96-2 Filed 02/28/17 Page 28 of 28 PageID: 1806 EXHIBIT B Case 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 1 of 109 PageID: 1807 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 1 IN THE UNITED STATES DISTRICT COURT IN AND FOR THE DISTRICT OF DELAWARE - - - CORDIS CORPORATION, Plaintiff, vs. BOSTON SCIENTIFIC CORPORATION and BOSTON SCIENTIFIC SCIMED, INC., Defendants. : : : : : : : : : : : CIVIL ACTION NO. 10-39 (SLR) - - - Wilmington, Delaware Friday, May 11, 2012 9:18 o'clock, a.m. - - - BEFORE: HONORABLE SUE L. ROBINSON, U.S.D.C.J. - - - APPEARANCES: ASHBY & GEDDES BY: STEVEN J. BALICK, ESQ. -and- Valerie J. Gunning Official Court Reporter Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 1 of 108 PageID #: 5994ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 2 of 109 PageID: 1808 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 2 APPEARANCES (Continued): SIDLEY AUSTIN LLP BY: DAVID T. PRITIKIN, ESQ., WILLIAM BAUMGARTNER, JR., ESQ., LINDA R. FRIEDLIEB, ESQ. and ANTHONY BALKISSOON, ESQ. (Chicago, Illinois) -and- SIDLEY AUSTIN LLP BY: PAUL J. ZEGGER, ESQ. (Washington, D.C.) -and- JOHNSON & JOHNSON. BY: MICHAEL J. TIMMONS, ESQ. SENIOR COUNSEL (New Brunswick, New Jersey) Counsel for Plaintiff YOUNG CONAWAY STARGATT & TAYLOR LLP0 BY: KAREN L. PASCALE, ESQ. -and- ARNOLD & PRTER LLP. BY: MATTHEW M. WOLF, ESQ., EDWARD HAN, ESQ., JOHN NILSSON, ESQ. and SARA P. ZOGG, ESQ. (Washington, D.C.) Counsel for Defendants - - - Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 2 of 108 PageID #: 5995ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 3 of 109 PageID: 1809 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 3 P R O C E E D I N G S (Proceedings commenced in the courtroom, beginning at 9:18 a.m.) THE COURT: Good morning, everyone. (Counsel respond, "Good morning, your Honor.") THE COURT: Familiar territory, but I will look forward to hearing what you have to say interest everything. Why don't we start with introductions and then we'll move forward. MR. BALICK: Good morning, your Honor. How are you? Your Honor, Steven Balick from Ashby & Geddes for Cordis Corporation, and from the Sidley Austin firm, David Pritikin. MR. PRITIKIN: Good morning. THE COURT: How are you? MR. BALICK: William Baumgartner, Paul Zegger, Linda Friedlieb. MR. ZEGGER: Good morning, your Honor. MS. FRIEDLIEB: Good morning, your Honor. MR. BAUMGARTNER: Good morning, your Honor. THE COURT: Good morning. MR. BALICK: And Anthony Balkissoon. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 3 of 108 PageID #: 5996ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 4 of 109 PageID: 1810 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 4 MR. BALKISSOON: Good morning. MR. BALICK: We're also joined today by Michael Timmons from Johnson & Johnson. MR. TIMMONS: Good morning, your Honor. THE COURT: Good morning. MR. BALICK: Thank you. THE COURT: All right. Thank you very much. MS. PASCALE: Good morning, your Honor. Karen Pascale from Young Conaway for Boston Scientific. I'd like to introduce co-counsel from Arnold & Porter. This is Matt Wolf. MR. WOLF: Good morning, your Honor. MS. PASCALE: John Nilsson. MR. NILSSON: Good morning. THE COURT: Good morning. MS. PASCALE: Ed Han. MR. HAN: Good morning. MS. PASCALE: Sara Zogg. MS. ZOGG: Good morning. MS. PASCALE: Also in the courtroom, your Honor knows from Boston Scientific, Peter Gatner. THE COURT: Good morning. All right. Give me a minute to get in my computer so I can be taking my notes. Are we going to start with claim construction, Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 4 of 108 PageID #: 5997ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 5 of 109 PageID: 1811 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 5 as we usually do? MR. BAUMGARTNER: Your Honor, Bill Baumgartner for Cordis. The parties had some discussions before the hearing what about an appropriate order would be and we have a suggestion for your Honor's consideration that I can hand up. THE COURT: All right. (Mr. Baumgartner handed a document to the Court.) THE COURT: Thank you. MR. BAUMGARTNER: Thank you. So for three of the claim terms we would propose just submitting that on the papers, and then what we've done is start with the summary judgment motion, unauthorized sale, and then proceed to the claim construction issues one by one with the related summary judgment motions being argued after the relevant claim term. THE COURT: All right. MR. BAUMGARTNER: So that's the concept. THE COURT: All right. Is everyone in agreement? MR. WOLF: Yes, your Honor. THE COURT: All right. Wonderful. Well, let's start with BSC's motion. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 5 of 108 PageID #: 5998ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 6 of 109 PageID: 1812 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 6 MR. WOLF: Thank you, your Honor. I apologize, your Honor. We have a technical glitch. THE COURT: Oh, that's all right. I'm still getting myself set up. (Pause.) MR. WOLF: Wolf your Honor, we're going to do it the old-fashioned way. THE COURT: I understand that. My computer isn't working either, so all right. MR. WOLF: Good morning, your Honor. THE COURT: Good morning. MR. WOLF: Matthew Wolf for Boston Scientific. We are going to start by talking about a threshold issue in this case, one that, if we are correct, obviates everything else you're going to hear today. And it's the notion of authorized sale. And Sara? The principle is relatively straightforward. The authorized sale of an article that substantially embodies a patent exhausts the patentholder's rights and prevents the patentholder from invoking patent law to control post-sale use of the article. Simply put, if there's a sale that is authorized of a patented device, patent law ceases to care after that Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 6 of 108 PageID #: 5999ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 7 of 109 PageID: 1813 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 7 sale what happens next, and that's precisely what's going on in this case. Next slide. In 2001, plaintiff, Cordis, granted Abbott a very broad license to manufacture and sell any products covered by a certain set of patents. Here we see the rights granted. Cordis hereby grants to Abbott and its affiliates worldwide nonexclusive rights, and then we see the laundry list of patent rights, make, have made, use, offer for sale, sell and import. So anything that could arguably be touched by the patent law, Cordis authorized Abbott to do. And what did they do it with regard to? Well, here's an identification of some of the patents, and it's undisputed that among the patents licensed in the 2001 agreement between Cordis and Abbott are the patents at issue in this case. We see the '604 patent. We see the reference to the stent having a multiplicity of undulating longitudinals, and, of course, it refers to continuations, continuation applications, et cetera. As I said, Cordis does not challenge the notion that the Fischell patents, all three of the Fischell patents at issue in this case, were the subject of the license, among others. Next slide, please. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 7 of 108 PageID #: 6000ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 8 of 109 PageID: 1814 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 8 So then here's the final D of the QED. In 2006, a transaction agreement was entered whereby Abbott agreed to sell to Boston Scientific the stents that Boston Scientific in turn sells to the public and that are the subject of the infringement claims in this case. Abbott was authorized to sell. Boston Scientific buys from Abbott. Once that transaction occurs, all patent rights are exhausted. There's nothing left to talk about. Infringement does not matter. Validity does not matter. Claim construction does not matter. These are authorized sales. Your Honor will recall that last summer we moved to file this motion early because we -- we thought that would obviate a lot of this work. Just so we are clear, your Honor, we meant what we said. We do think this moots everything. Next slide, please. So what is Cordis' response? Cordis' response centers upon this provision: Further, in the event of the merger or consolidation of Abbott with a major competitor, the licenses granted herein shall not extend to the business of such major competitor without the prior written approval of Cordis. And they argue, Cordis argues that this somehow undermines the authorization of the sale. The threshold Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 8 of 108 PageID #: 6001ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 9 of 109 PageID: 1815 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 9 problem with this argument is that Boston Scientific is not buying product from whatever Abbott acquired, from whatever subsidiary we're talking about. As you saw in the previous slide, and as we discussed in the papers, Boston Scientific buys product from Abbott itself. Arguably, this provision limits the definition of affiliate or what affiliates are granted. If Abbott were to have bought Medtronic and Medtronic became an affiliate, well, maybe this would say that they don't get the benefits of affiliate language of the license, but that's not our circumstance here. Boston Scientific buys from Abbott itself. So this does not apply. Even if this could somehow be extended, and by its plain language it can't, to suggest that Abbott's rights as opposed to its affiliates would be undermined in the case of a merger or consolidation, no such merger or consolidation has occurred. Next slide. It is important to recognize there has never been an allegation by Cordis against Abbott that they are somehow breaching the license, that somehow their sale of product to Boston Scientific is a breach of the provision we just saw. So that can't be the argument for why the authorized sale doctrine comes into play here. Next slide. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 9 of 108 PageID #: 60023 6 928 PGS LHG 96-3 Filed 02/28/17 Page 10 of 109 PageID 1816 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 10 This is the structure. Abbott purchased a business unit, a company, and the question then we must ask, if we get past the first two issues, is, does this constitute a merger or consolidation? Next slide. And the contract tells us through what prism we must answer that question. I think I just mixed my metaphor, your Honor, but you probably understand the point. This agreement shall be construed, interpreted, and governed by the laws of the State of Delaware, without regard to conflict of law principles. So we ask under Delaware law, even assuming everything Cordis has said so far is accepted, that somehow this question is relevant -- and we think it's not because it's Abbott directly that's selling -- has there been a merger or consolidation with the former Guidant companies that Abbott acquired in 2006? And the answer is plainly no. Next slide. Your Honor knows better than I do what a merger and consolidation is under Delaware law. A merger is when two companies become one. Consolidation -- well, when Company B merges into Company A and Company A exists and Company B ceases to exist. That hasn't happened here because Abbott and the former Guidant companies both still Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 10 of 108 PageID #: 6003ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 11 of 109 PageID: 1817 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 11 exist. Consolidation is when Company A and Company B come together and form Company C. Again, for the very reason I just stated, there has been no consolidation. Company A, Abbott, Company B, ACS, still exist. There has been no merger or consolidation. So even if Cordis could somehow find comfort in that provision, it does not apply here. Next slide. We see a lot in the briefs about the intention of the parties, the intention of Cordis in entering the agreement. There are two problems with this argument. First of all, we don't have to get to intention. There's a standard integration clause here. It's clear on the four corners of the contract. They said Delaware law would apply. We don't look to what they hope to achieve. There's a second reason, though. Next slide. And that is that Johnson & Johnson/Cordis knew exactly how to accomplish the thing they claimed they were trying to accomplish here and, quite frankly, failed. In a license predating the one at interest, the Cordis/Corvita license, they wrote what they wanted in this case. Cordis grants to Corvita nonexclusive license under the patents to make, use and sell licensed products only to end users or independent sales representatives of Corvita who are not Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 11 of 108 PageID #: 6004ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 2 of 109 PageID: 1818 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 12 themselves manufacturers of medical devices. That's the provision they wish they had wrote into the 2001 agreement, but they didn't. In fact, there's irony here, your Honor, which is that there's nothing in the agreement that would have prevented the following. Prior to Abbott's acquisition of ACS, the Guidant affiliate, Abbott could have, under the agreement, purchased from ACS the stents in question because they had have made rights and turned around and sold them to Boston Scientific. So they're suggesting that something that would have been perfectly appropriate, perfectly consistent with the agreement before they acquired ACS, somehow they lose rights? That's counterintuitive in the extreme. And, again, your Honor, fundamentally, they knew how to do what they claimed this contract did. They did it before. They didn't do it here. The final point, your Honor -- next slide, please. And this is another threshold question. If your Honor feels that there is an ambiguity in the contract -- and we, quite frankly, don't believe there's anything close to an ambiguity -- but if your Honor feels she must resort to extrinsic evidence, if it's uncertain what the contract meant by merger or consolidation, it's uncertain what the effect of a merger or consolidation would be, then the appropriate course is for Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 12 of 108 PageID #: 6005ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 13 of 109 PageID: 1819 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 13 Abbott and Cordis, or if they refuse, Boston Scientific and Cordis, to arbitrate that question. The construction of the Abbott/Cordis contract is subject to an arbitration clause. And so if we get beyond the questions of law under Delaware law, if your Honor finds that there's something to do beyond simply saying there has been no merger or consolidation under Delaware law, we still don't belong here. There must be a threshold inquiry done by an arbitrator or arbitration panel elsewhere, and then we can see where those chips fall. Thank you, your Honor. THE COURT: All right. Thank you. MR. BAUMGARTNER: Bill Baumgartner for Cordis, your Honor. There were some important facts left out of the presentation that you just heard. One of the important facts is that Abbott has the benefit of two Fischell licenses, one originating at Abbott itself in 2001, and a second originating at in 2004. Now, Abbott itself currently sells a stent which is identical to Promus called Xience. And Xience infringes the Fischell patents. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 13 of 108 PageID #: 6006ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 14 of 109 PageID: 1820 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 14 Abbott's position, and Cordis concurs with this, is that Xience is licensed under the 2004 agreement. And as a consequence of that, Abbott is not asserting its rights under its own 2001 license Now, the 2004 license that Abbott relies on for Xience, its product, clearly does not apply to sales of Promus to BSC because , and, therefore, the present motion simply ignores the 2004 license. Instead, BSC says that the 2001 Abbott license applies to the Promus stents that it buys from Abbott. THE COURT: Now, tell me when -- all right. And the sale of stents from Abbott to BSC postdated both agreements? MR. BAUMGARTNER: Yes. That started some years later, your Honor. THE COURT: All right. MR. BAUMGARTNER: So the chronology here is, 2001, Abbott licenses the Fischell patents. 2004, licenses them. 2006, Abbott buys the Guidant stent business. And then the launch date, if memory serves, was 2008 or thereabouts for both Promus and Xience. As I said, BSC contends that the 2001 Abbott license applies to the Promus stents that it buys from Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 14 of 108 PageID #: 6007ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 15 of 109 PageID: 1821 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 15 Abbott, but the actual license of the -- actual language of the 2001 Abbott license simply does not support this view. There was no license under that agreement for stent products that came to Abbott as the result of certain mergers and acquisitions. And Promus was developed by Guidant before the Guidant stent business was acquired by Abbott. Therefore, Promus came to Abbott as a result of its acquisition of Guidant's stent business. THE COURT: You know, I just missed a logical step in there. Start that phase of your argument again. You are saying that it's the 2004 agreement that we should be looking at, not the 2001 agreement, but then you just skipped back to the 2001 agreement? MR. BAUMGARTNER: No. THE COURT: Okay. MR. BAUMGARTNER: I miscommunicated my position, your Honor. THE COURT: Yes. MR. BAUMGARTNER: Let me clarify that. THE COURT: Thank you. MR. BAUMGARTNER: The 2004 agreement is completely irrelevant to BSC because it does not apply to sales of Promus from Abbott to BSC. What Abbott relies upon the 2004 agreement for is to authorize its sales of its product, Xience. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 15 of 108 PageID #: 6008ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 16 of 109 PageID: 1822 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 16 THE COURT: All right. Well, then, I really have missed everything, because I thought you said the important fact was that it's the 2004 agreement that I should be looking at, not the 2001 agreement. So if the 2004 agreement is irrelevant, then just focus on the 2001 agreement, and that's what I will assume you're talking about. I'm sorry. I got off on the wrong foot altogether. MR. BAUMGARTNER: Let me tie this up, your Honor. The 2004 agreement is relevant in the sense that none of the parties to the 2001 agreement, Abbott or Cordis, think that that agreement applies to the sales by Boston Scientific of Promus. And the reason we know that is that there's a royalty that has to be paid under that 2001 agreement. Abbott has never paid that royalty to Cordis, and Cordis has never asked for it. And the reason is that they are in agreement that the merger and consolidation language prevents that license from extending to the Promus stents that Boston Scientific buys from Abbott. So the conduct of the parties to the actual agreement is consistent with the language of the agreement and all of it points to the same conclusion, that Promus is Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 16 of 108 PageID #: 6009ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 17 of 109 PageID: 1823 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 17 not licensed. And so that's really how it all comes together, your Honor, and how all these confusing agreements eventually interrelate and reach that conclusion. Did that help clarify it a little bit? I think it's worth taking time to review the critical language in the 2001 license agreement, so let me show you that critical language. The probably most critical language in the agreement is something that wasn't even referred to in the BSC presentation, and that's the definition of major competitor in Section 1.9. And the definition of major competitor is, the divisions or businesses of the following entities or their affiliates, and then there's a list of entities. One of the listed entities is Guidant, Inc., and the other is Advanced Cardiovascular Systems, Inc., which was a Guidant subsidiary. And it's saying the divisions or businesses of the following entities or their affiliates or major competitors, defined term. The crucial aspect of this definition, your Honor, is that it refers specifically to divisions or businesses which could be unincorporated entities. And the fact that the parties specifically intended major competitors to encompass unincorporated entities is absolutely critical for reasons that I will come Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 17 of 108 PageID #: 6010ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 18 of 109 PageID: 1824 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 18 back to in a minute. The second crucial provision in this agreement is Section 10.4, which we've reproduced on the screen. And it says, "Further, in the event of the merger or consolidation of Abbott with a major competitor, the licenses granted herein shall not extend to the businesses of such major competitor without the prior written approval of Cordis, which approval may be withheld without reason." So the proper construction of this, your Honor, needs to take account of the fact that major competitor is defined to include unincorporated entities, like divisions or businesses, and Section 10.4 is talking about the merger or consolidation of Abbott with such a major competitor. So it obviously is contemplating as one possibility a merger or consolidation with an unincorporated entity. What that means is that merger and consolidation is not just limited to transactions between two corporations, like a statutory merger, but, instead, merger or consolidation is being used in its broad sense to refer to any combination of Abbott's stent business with an incorporated or unincorporated stent business. THE COURT: So you're saying the parties were their own lexicographers? They didn't mean to have the standard definitions generally applied by Delaware law to these very familiar terms? Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 18 of 108 PageID #: 6011ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 19 of 109 PageID: 1825 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 19 MR. BAUMGARTNER: Well, they didn't mean statutory merger and they didn't mean statutory consolidation, yes. I -- THE COURT: They seem odd words, though, for sophisticated businesspeople to use if they don't mean to have their normal definitions apply, don't you think? MR. BAUMGARTNER: Well, if you look at the definition in Black's Law Dictionary of merger/ consolidation, it gives the statutory merger and statutory consolidation definition, of course, but it shows these words have broader meanings as well and can encompass, as I said, any combination of Business A with Business B. And the question is, in the context of the agreement, can you tell which of those alternative definitions were intended? THE COURT: Well, if they hadn't specifically said Delaware law, I think your argument would be stronger. I think given the fact that Delaware law is known for its -- I mean, corporate law, that one would assume that you are talking about the more formal meaning of it. MR. BAUMGARTNER: Let me respond to that, your Honor. THE COURT: All right. MR. BAUMGARTNER: I think the Delaware choice of law language is very important in interpreting this Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 19 of 108 PageID #: 6012ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 20 of 109 PageID: 1826 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 20 contract, but what it's mainly important for, I think, is that it gives the rules for contract interpretation that must be applied. And the rules for contract interpretation that must be applied are the Delaware rules, of course, which, as your Honor knows better than me, follows the objective theory of contracts. And the idea is you interpret the contract language as it would be understood by an objective, reasonable third party. The Court first determines whether the contract is unambiguous as a matter of law, given the parties' language in the context of the prior agreement, and then if there's ambiguity, you can consider extrinsic evidence to resolve the ambiguity. So I think the first question is, applying those principles, one has to look at Section 10.4 and ask the question, how would an objective, reasonable third party looking at this in the context of that language understand it? And certainly this objective third party understands that he's applying Delaware contract interpretation rules because that's what's required by the choice of law provision, but then he interrelates that major competitor defined term with the merger or consolidation language, and he realizes, I think pretty quickly, that merger/ consolidation cannot be limited to transactions involving Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 20 of 108 PageID #: 6013ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 21 of 109 PageID: 1827 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 21 two corporations because, if they were, then the reference to divisions or businesses, which are not corporations, would be superfluous. It is also important to note, your Honor, that this term major competitor is used only once in the contract, in Section 10.4. That's the only place. So there was no reason to define major competitor to include unincorporated entities to accomplish some other purpose. The only purpose that accomplished was to give broad breadth to this carveout for this major competitor exclusion. Now, BSC makes the argument that the contract has an integration clause specifying that all the contract terms are laid out in the agreement, and therefore reliance on context would violate the integration clause. But that sort of misses the point, I think, because in this instance, what the context of Section 10.4 juxtaposed with the major competitor definition -- what that does is, it illuminates what these parties intended by the definition of those terms. And even though the contract language, in our view, is not ambiguous, if one were to think that there was ambiguity, one could then look at extrinsic evidence, and the extrinsic evidence is uniformly supportive of the Cordis interpretation of the contract language. And there are two pieces of extrinsic evidence Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 21 of 108 PageID #: 6014ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 22 of 109 PageID: 1828 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 22 that are particularly compelling, I think, your Honor. THE COURT: I guess I'm -- bring me back to just kind of a fundamental, common sense question. Abbott sells stents to BSC. BSC is being sued for infringement. Cordis isn't taking action against Cordis -- I mean against Abbott? I mean, I guess I'm a little confused about that. MR. BAUMGARTNER: Well, let me -- that's a good question, your Honor, and let me try and answer it. Cordis had the ability either to sue Abbott for making an unauthorized sale of the Promus stent to Boston Scientific, or it had the option of suing Boston Scientific because it was selling the unauthorized stent it obtained from Abbott. If the claim had been made against Abbott, it would have been subject to a mandatory arbitration clause. A claim against Boston Scientific could proceed in court. And so there was a strategic judgment which of those avenues should be pursued, and the strategic conclusion was this Court and the claim against Boston Scientific. But you're absolutely right, that the -- basically, the same claim could have been pursued against Abbott in arbitration and it was not. But that does not relieve BSC of liability for its own infringing acts, and Cordis has elected to proceed against BSC, not Abbott. Now, the extrinsic evidence, your Honor, Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 22 of 108 PageID #: 6015ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 3 of 109 PageID: 1829 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 23 supports the Cordis view pretty compellingly. For one thing, as I mentioned before, there's a running royalty under the 2001 Abbott agreement that Boston Scientific relies upon. Abbott has never paid the royalty, and Cordis has never demanded it. Furthermore, your Honor, there is evidence in the record from one of the negotiators of the 2001 agreement, Robert Croce, the Cordis chairman -- the Cordis chairman. And this is the testimony that Mr. Croce gave as to what the intent of the parties was in drafting that language about merger and consolidation and major competitor. And his testimony as to what the parties' intent was is a hundred-percent supportive of Cordis' view of what that language means. Now -- THE COURT: Kind of a leading question, so I don't know how compelling that is, to tell you the truth. MR. BAUMGARTNER: There's a factual issue here, of course, as to whether, in terms of what was done with Guidant in connection with the Abbott acquisition, whether that major competitor language was triggered. Was there a merger or consolidation with divisions or businesses? And I think the evidence here shows that there was. What happened in the Abbott acquisition of the Guidant stent business was that Guidant bought the stock of Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 23 of 108 PageID #: 6016ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 24 of 109 PageID: 1830 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 24 certain Guidant subsidiaries, including Advanced Cardiovascular Systems, Inc., which, as you'll recall, it was specifically identified as one of the major competitors that was encompassed within the definition. And then, in addition, it bought assets of other Guidant subsidiaries. So this is both a stock and an assets transaction. At the time of the acquisition, Abbott stated publicly that it was combining its stent business with Abbott, or with Guidant's. And let me show you some of the statements, your Honor. There was a press release that talked about Guidant's vascular business being combined with Abbott's current vascular business. And there was a quotation attributed to Abbott's CEO in the press release, which referred to the combined Abbott and Guidant businesses. Boston Scientific says in its reply brief that it is undisputed that ACS did not fuse with, was not absorbed into, and did not unite with Abbott. But that certainly is disputed, because currently Advanced Cardiovascular Systems, Inc. Is part of Abbott Vascular, which is an unincorporated division of Abbott. And the statements in the record that we have on the screen here are evidence that the Abbott stent business and the pre-existing Guidant stent business have been combined, and thus trigger the merger and consolidation carveout in the license Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 24 of 108 PageID #: 6017ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 25 of 109 PageID: 1831 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 25 agreement. And this is a summary judgment context in which we're evaluating this evidence, of course, and therefore all reasonable and factual inferences must be drawn in Cordis' favor. It's certainly a reasonable inference from this evidence that the merger and consolidation language applies and the carveout prevents the license from extending to sales of Promus. Now, BSC also makes an argument involving the have made language in the contract, and Mr. Wolf gave an excellent summary for you of what that argument is. Basically, BSC says that the license agreement gave Abbott the ability to go to Guidant and have Guidant use its technology to make licensed Fischell products before the acquisition took place, and therefore it would not be reasonable to read the contract as preventing Guidant from making licensed products after a Guidant/Abbott combination. There are a couple of answers to that argument, your Honor. The first is, reasonable or not, that's what the contract says. And courts in Delaware enforce contracts as written. In any event, it is reasonable to interpret the contract the way Cordis is advocating. And let me explain the business background that makes this a reasonable construction. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 25 of 108 PageID #: 6018ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 26 of 109 PageID: 1832 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 At the time of the 2001 agreement, Abbott was really sort of a bit player in the stent business, and as Mr. Croce explained at his deposition, the business analysis of Cordis at the time went somewhat as follows: That if they were willing to pay a royalty, and if there were protections against their license right going to the big players, then Cordis was okay giving them a license. If Abbott was able to get Guidant to sell it a stent for distribution by Abbott, that was unlikely to pose much of a competitive threat in the business environment in 2001 because Guidant was likely to charge Abbott a premium price for its stent, and Abbott had then to pay Cordis a royalty. So that wasn't going to be a problem and Cordis didn't have a problem with that. On the other hand, if Abbott were to acquire the Guidant stent business, then Abbott is a big player and the whole underpinning of this transaction was that Cordis did not want the Fischell patent rights to go to big players. And that's why the language was written the way it was and that was the purpose of it. I should also add, your Honor, that under BSC's own view of the contract, Guidant would not be licensed in the event of a statutory merger or statutory consolidation with Abbott. Everybody agrees with that. But the same have Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 26 of 108 PageID #: 6019ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 27 of 109 PageID: 1833 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 27 made rights would have existed before the statutory merger, and the right of Guidant to make a licensed product would have been distinguished by the statutory merger. So the same -- their argument really proves too much because it applies to their own reading of the contract and yields what I guess they would say is an unreasonable result in that case, too. Mr. Wolf said at the very end of his presentation that in the alternative, an arbitration may be needed to resolve BSC's license defense, and perhaps your Honor should order that in BSC's view. Well, that's not right, your Honor, because what Abbott and Cordis agreed to arbitrate was disputes between them about the scope of the license. Cordis never agreed to arbitrate disputes with BSC over its license defenses. And at this point, there is no dispute between Abbott and Cordis to arbitrate, because Abbott and Cordis agreed about what the 2001 license means. And what it means is that BSC is not licensed and no royalties are due. Now, in a sense, your Honor, we have an ironic -- really ironic situation here. Quite unusual, I think. BSC is not a party to this 2001 license agreement. Its reading differs dramatically, diametrically, Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 27 of 108 PageID #: 6020ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 28 of 109 PageID: 1834 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 28 from that of the actual parties, and from the conduct of those parties onto their own contract. And what BSC is asking your Honor to do is to enter summary judgment that the two parties' readings -- reading of their own contract is wrong. And -- THE COURT: That's almost as ironic as Cordis coming back and asking me to tweak claim construction that has been approved by the Federal Circuit. So, yes, I don't think anybody should be here, quite frankly. But, anyway, yes. Yes, it is ironic that the parties to the contract see a business opportunity, and here you are. I mean, Abbott is getting what it wants, which is sales at this point, and Cordis is getting what it wants, which is its day in court rather than arbitration. So, yes. Everybody gets what they want except BSC and the Court. MR. BAUMGARTNER: Well, and then the question is, is the Abbott/Cordis position validated by the actual language of the agreement? And our position would be that it is, your Honor. And BSC disagrees, obviously. THE COURT: Well, it would truly be ironic if -- and maybe a first in my experience, if, in looking at this contract language, I disagree with Cordis and find that -- well, it would be ironic if the Court found that the Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 28 of 108 PageID #: 6021ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 29 of 109 PageID: 1835 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 29 language as written is essentially inconsistent from the conduct of the parties. I mean, I've never been faced with that, and I don't exactly know how I will try to make that -- where logic leads me from there. But I'm saying I think that's a real possibility. MR. BAUMGARTNER: Fair enough, your Honor. And it's an interesting legal issue that -- THE COURT: It is, indeed. You always present me with interesting legal issues. MR. BAUMGARTNER: So that concludes my presentation, your Honor. THE COURT: All right. Thank you so much. MR. BAUMGARTNER: Thank you. MR. WOLF: Your Honor, may I have 45 seconds? THE COURT: Sure. It's your time. You can spend the time you need. MR. WOLF: Your Honor, there was one very important fact that was left out of the last discussion, and that is that Mr. Baumgartner said again and again that Abbott and Cordis were in agreement on the meaning of the contract. In fact, there's no evidence of that in the record whatsoever, one way or the other. We're not saying Abbott agrees with us. We don't know. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 29 of 108 PageID #: 6022ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 30 of 109 PageID: 1836 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 30 The reason is -- and this is in the record -- that Abbott does not believe that the product infringes the patent. They don't believe their royalty obligations are triggered. So on infringement purposes, they agree with us. The fundamental question, your Honor, comes down to something that Mr. Baumgartner and I agree on completely. Courts in Delaware enforce contracts as written. I took that down as quickly as I could. As written, Abbott has a right to sell its product. We're buying from Abbott; we're not buying from ACS. We're not buying from any of these unincorporated entities that hypothetically Mr. Baumgartner said may exist in light press releases. The contract says what it says, and we're buying pursuant to the terms of that contract. Thank you. THE COURT: All right. MR. BAUMGARTNER: May I -- THE COURT: Sure. MR. BAUMGARTNER: I think it's only 30 seconds for me, your Honor. THE COURT: Well, it's an important issue. I'm happy to hear it. MR. BAUMGARTNER: Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 30 of 108 PageID #: 6023ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 31 of 109 PageID: 1837 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 31 THE COURT: Okay. Thank you. Any final word from BSC? MR. WOLF: No, your Honor. THE COURT: All right. Let us move on. MR. ZEGGER: Your Honor, Paul Zegger for Cordis. Next on our agenda of items is the construction of the claim term undulating. That appears in the '604 patent, the '240 patent. And the specific claim terms are undulating and undulating and undulating shape and undulating section. Your Honor, in reading over the claim construction briefs and preparing my arguments for today, it struck me that much of the discussion really focused on infringement and the application of the claim construction. And as we know, the governing law states that infringement inquiry is really a two-step process. First, figuring out the meaning of the claims, and then the second part being the application. THE COURT: But we all know that you are not Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 31 of 108 PageID #: 6024ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 32 of 109 PageID: 1838 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 32 doing it in a vacuum, and therefore I've always felt that it was inappropriate for me to be doing it in a vacuum necessarily. And, really, you know, if we can cut to the chase, Cordis has added language to the construction that had been used in the prior case that the Federal Circuit approved, and that's really what I want you to explain. MR. ZEGGER: And I will. I'm just suggesting, your Honor, that analytically what we would like to do is to address the claim construction issue and explain why we are advocating the claim construction that we have, and then separately, in the context of the infringement motion, apply that claim construction to Promus and to analytically keep the -- the claim construction and the application to whether Promus infringes or not separate. I will address all of the arguments that BSC makes as to why the claim construction, why the NIR division precludes infringement, but I will address those in the context of the infringement analysis, where it's more appropriate. If we focus on the claim construction issue, the first prong of the analysis, on the meaning of undulating, the two choices that we have are the one on the left, our proposed construction, and the one on the right. And the choice is simple. It is, do we or do we Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 32 of 108 PageID #: 6025ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 33 of 109 PageID: 1839 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 33 not take into consideration the language of the Federal Circuit, the clarifying language as to what the claim construction means. THE COURT: I don't even know what that means, so it's not clarifying to me. So perhaps you can explain it to me. MR. ZEGGER: Okay. I will. As we know in your court, in the Fischell I case, you construed undulating to mean rising and falling in waves, thus having at least a crest and a trough. The Federal Circuit then clarified what it meant, going through the definition of Webster's of a wave and then stating -- and this is the language that we're relying upon here -- stated that, accordingly, the terms crest and trough, as used in the district court claim construction, implicate changes of direction, with the curve extending beyond the point of inflection. And it was on that basis that the Federal Circuit then proceeded to analyze whether NIR infringed or not. And we believe that it is proper to take that clarifying language about what a crest and trough mean and to include that in the claim construction. We think, frankly, that there's infringement whether you apply the claim construction that BSC is advocating or ours, but analytically we think it's proper to Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 33 of 108 PageID #: 6026ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 4 of 109 PageID: 1840 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 34 include the language, the clarifying language of the Federal Circuit, and BSC is ignoring that language, advocating that we keep it out. We believe that to ignore what the Federal Circuit told us about how to find a crest and a trough, that it needs to have a curve extending beyond the point of inflection, would be legal error. In the claim construction or somehow in the jury instructions, that needs to be communicated to give the jury, give the Court the same criteria that the Federal Circuit was using in its evaluation of the NIR stent. We don't have any dispute as to what a point of inflection is. The parties agree that a point of inflection is a point on a curve that is separating a curve concave upward to one concave downward. There's a point of inflection. There's a lot that we don't agree about, the parties. The definition of a point of inflection is not one of them. I think the experts agree that that is the operative definition of a point of inflection. So we know from the binding rulings of this Court and the Federal Circuit what an undulating structure, an undulating shape, an undulating section, is. THE COURT: And I'm sure the Federal Circuit's clarification is going to help a jury. MR. ZEGGER: I think it will, your Honor, because it's telling them how far does a curve need to Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 34 of 108 PageID #: 6027ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 35 of 109 PageID: 1841 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 35 extend in order to define a crest and a trough. And this is also the way the Federal Circuit approached its application of NIR. It needs to go beyond the point of inflection. This clarifying language is helpful in defining how to find a crest and a trough, how much of a curve -- how much of a curve do we need to get a crest that is distinct from a trough. And the Court is telling us how far. It's beyond the point of inflection. So we know from the prior rulings, we're not going back into prosecution histories or the specifications -- we know that an undulating structure is rising and falling in waves, plural. Thus, having at least a crest and a trough, and then we have the, what we think is important, definitional language that the crest and the trough changes a direction with the curve extending beyond the point of inflection. It gives a firmer criteria for determining whether the crest and trough are met. And we urge that this construction be the one that is adopted. As I said, I don't think in terms of infringement it's going to be outcome determinative, but just from a point of view of legal rigor, we believe that this one is the one that should be adopted. And as I said, in terms of the application of that claim construction with respect to NIR, with respect to Promus, that's an Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 35 of 108 PageID #: 6028ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 36 of 109 PageID: 1842 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 36 infringement issue, and I will address those issues in that context where we believe it is more appropriate. MR. WOLF: Your Honor, I don't want to belabor this. Cordis is attempting what appears to be a four cushion bank shot to turn what was a difficult Federal Circuit opinion for them into an argument for infringement in this case. The first bank shot, first shot they need to take is to somehow explain why we're not all bound by what the Federal Circuit did, and I don't think we can get past that point, your Honor, because I think even if we wanted to change the construction, we couldn't do that. It's the law of the case, it's both parties are estopped. It's not our proposal. I think this slide is actually somewhat misleading. It is not our proposal. It's the Federal Circuit's holding, it's your Honor's holding. I think we're bound. So I think that ends the discussion right there. But let's talk for a moment about the other three elements of the four cushion bank shot. What Cordis wants to do is first take one piece of language of the Federal Circuit's opinion that they think might be helpful, put that into construction, but ignore all the other ways the Court talked about your Honor's construction. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 36 of 108 PageID #: 6029ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 37 of 109 PageID: 1843 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 37 For example, the Court said, based on the ordinary meaning of the construction as given to the jury, it is apparent that the construction requires multiple waves. Your Honor, we would love to see that in your Honor's construction. We don't think we can get past that first hurdle. But if you are going to start importing descriptions from the Federal Circuit, why wouldn't we include this one as well? Or how about this? We'd like this one in even more. The U-loops thus merely level out, and they lack the change in direction required for literal infringement. If we're going to start taking descriptions or the spice on the dish that the Federal Circuit put in affirming your Honor's noninfringement holding, why wouldn't we include this as well? We'd love to. We just can't. We have what we have. So that's the second. They want to pick one of all the many different things that the Court said in applying your construction as approved by the Federal Circuit and ignore all the ones that are unhelpful. All right. They can't do that either. So what's the third bank of the four banks? Well, what they're going to try to do if they were to get the construction is stand in front of the jury and wave their hands and have them ignore the first part of your Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 37 of 108 PageID #: 6030ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 38 of 109 PageID: 1844 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 38 construction, the part about rising and falling and waves and say, let's just look for points of inflection. And your Honor's confusion, which you expressed from the bench, is frankly much less than mine, and I think that's precisely the point. Once you have a confused jury, well, mischief can result. And then the final point, of course, they're going to try to raise, the final bank of the cushion is to do what I just implied, which is to say, well, look. Forget whether there have to be multiple waves. Forget whether there has to be rising and falling. We see a point of inflection. Therefore, there's infringement. That's the trick that's trying to be pulled here. I commend them for the effort. Unfortunately, I don't think we can even get into the analysis. We're bound by what the Federal Circuit did. And if your Honor were even remotely inclined to revisit the construction, well, then, let's pull all of what the Federal Circuit said, not just the one thing that Cordis thinks favors them. Thank you. THE COURT: And, Cordis, you may respond, and then we'll move on. MR. ZEGGER: Okay. I think we've been accused with this four cushion bank shot analogy of doing things that we have no intention of doing. We're not going to Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 38 of 108 PageID #: 6031ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 39 of 109 PageID: 1845 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 39 ignore the claim construction. Our proposed claim construction has the rising and falling and waves, thus having a crest and a trough. We're not going to ignore that. We're duty bound to apply that. THE COURT: Well, I guess the real question that you need to address in your one minute of rebuttal is why just this additional language as opposed to other language where, according to you, with legal rigor, the Federal Circuit also described my claim construction. MR. ZEGGER: I think the -- I think that, first of all, we didn't propose the multiple waves because we think that that is subsumed -- subsumed in the already existing language that we have waves, plural. If there needs to be something more in here, then perhaps BSC should have proposed that we put more. We did our best to put in what we thought was definitional as opposed to an application of the claim construction. THE COURT: All right. MR. ZEGGER: If there's something more that's lacking out of the Federal Circuit decision, then perhaps it should be added. What we are -- THE COURT: Well, then, let's move on, then, because there's nothing else you need to say about what you have done. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 39 of 108 PageID #: 6032ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 40 of 109 PageID: 1846 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 40 All right. So what's the next one? MR. WOLF: Your Honor, we now move on to summary judgment on this -- the application of this term. THE COURT: Oh, okay. MR. ZEGGER: So since that is a motion that BSC brought, it makes sense for them to address that first. THE COURT: All right. Thank you. It is a little different than I usually do. MR. WOLF: If you prefer to follow a different course, your Honor -- THE COURT: No, no, that's fine. I mean, when you talked about doing claim construction first and then summary judgment, somehow I thought there was going to be more of a divide, but I'm happy to listen to it now. All right. Summary judgment on undulating. MR. WOLF: Yes, your Honor. And let's cut to the chase. On the left is the NIR stent. As a matter of law, as bound by the Federal Circuit in your Honor's holding, that does not infringe as a matter of law. On the right is the accused device, the Promus stent. And somehow some way, Cordis has tried to suggest that the thing on the right is undulating when we all know, when we are all bound by the fact that the thing on the left Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 40 of 108 PageID #: 6033ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 41 of 109 PageID: 1847 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 41 is not. And I'm very tempted at this point, your Honor, simply to sit down, because I fear that the more I say, the more credibility I will lend to the extraordinary gyrations that Cordis' briefs have gone through to make this argument. I will try to do it in five minutes or less, to walk the line between giving credence where credence isn't due, in all candor, and with great respect, and ignoring my obligation to my client of zealously advocating our position. So here was Cordis' initial contention with regard to the NIR. We see what they said were crests and troughs, and we see what the natural applications were. And I would note, your Honor, that these were the positions taken in this case. We took the position in correspondence with Cordis that they shouldn't have brought these undulating claims until the Federal Circuit ruled and only if they reversed your Honor. That was the position we've taken and you may hear about it again at some point later in this case, but this never should have been brought. If they had a good-faith belief in undulation, fine, at the appellate court. If they won, then bring the claim. They didn't. So all of this was happening in parallel. They Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 41 of 108 PageID #: 6034ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 42 of 109 PageID: 1848 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 42 were taking the position that those were undulations (indicating). We see that that is exactly the same position they took in NIR. And, interestingly, in the reply brief, they wrote under BSC's construction, claim 25, which had the undulating language, could not be satisfied by a U-shaped curve, as recited in the claim. Well, of course, now they're taking precisely the opposite position. They're saying somehow that a U-shaped curve can satisfy the construction. They were arguing this when they were trying to get out from under the prior claim construction, which we now know has been affirmed. This is your Honor's conclusion as to NIR. At trial, Cordis presented no evidence to suggest that the NIR stent has two arcing curves or waves which can be identified as a crest and a trough. Instead, Cordis argued that the U-shaped member of the NIR stent represents one full cycle of a sine wave, which includes one crest (the combined two top payment of the U) and one trough (the U curve itself.) THE COURT: I hope it wasn't me. It's really frightening to go back and look at your orders. MR. WOLF: Your Honor, I can't recall whether whether the "sic" is ours or yours. We'll give a pass to whoever it was, hopefully. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 42 of 108 PageID #: 6035ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 43 of 109 PageID: 1849 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 43 Cordis' attempt at satisfying the Court's claim construction, albeit creative, is unsuccessful. Of course, the Federal Circuit was ultimately less charitable than your Honor. They found it simply not correct. And I will just move through this. We talked about this in the context of claim construction. You were affirmed. And this is really important. The Court said, the U-loops thus merely level out, and they lack the change in direction required for literal infringement. And that's really the punchline to all of this. You don't get a crest and a trough, you don't get multiple waves if all you do when you get done your first wave is level out. And that's, of course, precisely what happens, and I apologize for -- we see, your Honor. I guess I have a light. We see that we have the U (indicating) and then we level out. That's precisely what the Federal Circuit said, what your Honor said doesn't meet the undulating limitation. So how do they try to get around it? Well, now what they do is to ask you to turn the page about 30 degrees and draw this black line here (indicating) and see, well, what we have, your Honor, is not rising and falling in the way you might think, up and down. We're now going to rise Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 43 of 108 PageID #: 6036ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 44 of 109 PageID: 1850 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 44 to the left and fall to the right. Of course, that's not what your Honor contemplated. That's not what the Federal Circuit talked about. That is not rising and falling in waves, as the Court or the patent discusses. That's simply rising. But Cordis would have you believe that that rises and falls in waves. And, of course, we get back to where I started. The argument proves nothing, because if it did, NIR itself would have met the undulating limitation, and we know as a matter of law, it does not. And to keep my promise, your Honor, I have about ten more slides that I'm going to now just pass by. Thank you. THE COURT: All right. Let me hear from Cordis. MR. ZEGGER: Your Honor, if we faithfully compare the claim construction, either claim construction proposed by either party, to Promus, the Promus stent meets each and every requirement. There is no basis for summary judgment. The structure of Promus is not in dispute. This is the structure here (indicating). I will go through all the different claim terms, both the ones that we have proposed as well as the ones that BSC has as well. We have in -- Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 44 of 108 PageID #: 6037ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 5 of 109 PageID: 1851 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 45 THE COURT: Well, are we not just talking about undulating at this point? MR. ZEGGER: We are talking about, simply the application of the term undulating to the Promus connector. In Promus, we have a -- going left to right, a curve that -- sort of curving down here, then going into a second curve, going up to a third curve there. We have not -- we have two points of inflection, one here, where we go from the first curve to the second curve, second point of inflection, and here. We have a crest. THE COURT: Is this someplace in your -- can you point where this is in your brief just so I can read it? MR. ZEGGER: What we did here, your Honor, was just to flip this around so we're faced with an argument that Boston Scientific has made with respect to the NIR. They're saying we're just like NIR. We flipped it around this way. The analysis in our briefs is the same. We just flipped it upside down. The analysis is the same however you look at it. We just flipped it in this orientation in order to show how different we are from the NIR. Boston Scientific is making an argument that the NIR noninfringement decision would preclude. THE COURT: Well, this looks like -- I mean, this looks like the NIR, so how is the NIR different? Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 45 of 108 PageID #: 6038ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 46 of 109 PageID: 1852 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 46 MR. ZEGGER: Well, I can flip forward and go to that just briefly. We have a crest here. We have a crest here, a trough. It falls and then rises, or rises and falls, depending on the way you look at it. If we are going to talk about NIR, it is extremely important that we be talking about the NIR structure the way the Federal Circuit discussed it. THE COURT: Well, that's what I'm saying. I'm looking at the picture of the NIR. Well, maybe I'm not. Where is it? I'm looking at what you've done. MR. ZEGGER: I think you are looking at Promus. THE COURT: Yes, I this I am. MR. ZEGGER: But I would like to address the point about NIR that BSC has raised here. If we are going to talk about NIR, we should talk about NIR the way the Federal Circuit looked at NIR and not the way Cordis had advocated and the Federal Circuit rejected the view that Cordis had taken of NIR. The Federal Circuit said, if we're going to look at NIR, we have to distinguish between the C-loops and the U-loops. Make sure that the width of the C-loops are treated as approximately constant with the C-loops maintaining the same degree of curvature. This particular drawing that was in the Federal Circuit decision, the Court said that that wasn't quite Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 46 of 108 PageID #: 6039ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 47 of 109 PageID: 1853 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 47 clear. The Court said that it went to engineering drawings. Here's the engineering drawing that the Court cited (indicating) in its Fischell I decision. If we do exactly what the Federal Court of appeals said we should do, keeping the C-loops approximately constant with the C-loops maintaining the same curvature, this is what you get. This is what the Federal Circuit's view of the NIR connector had to be. So going back and saying that NIR looked like something that Cordis had advocated earlier is not what we should be looking at. THE COURT: So you are saying that NIR is different because the U -- because you're not taking the U-loop -- you are not extending the U-loop any place. MR. ZEGGER: Jumping ahead. If we want to compare the NIR -- THE COURT: Well, that's what I want you to do. MR. ZEGGER: Okay. THE COURT: -- because, clearly, that is what is at issue here. MR. ZEGGER: Right. THE COURT: Is making sure that whatever decision I make is consistent with what the Federal Circuit did. MR. ZEGGER: Right. And we believe that if Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 47 of 108 PageID #: 6040ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 48 of 109 PageID: 1854 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 48 we're -- if the starting point is the very NIR structure of that -- that the Court of Appeals arrived at here as opposed to what Cordis had argued and was rejected, this is what it looks like. It lacks multiple waves. The U-loops just level out. They just go out this way. There's no point of inflection. We have a single curve. We have a trough, but no crest, or a crest and no trough, depending on how we're looking at it. Promus is a fundamentally different structure. We have three curves, not one. We have changes in direction, the past two inflection points (indicating). We have rising and falling. We have a crest and a trough. We have two crests and a trough. THE COURT: And so the waves are where? MR. ZEGGER: The Federal Circuit said in its decision that a wave could be either a crest or a crest and its associated -- adjacent trough. THE COURT: Where did it say that? MR. ZEGGER: Let me go back to the language right here (indicating). A wave as a shape or outline having successive waves like those of ocean waves: One of the crests of such a form or a crest with its adjacent trough. A crest or a crest and its adjacent trough. THE COURT: So -- MR. ZEGGER: Applying that, we have a crest Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 48 of 108 PageID #: 6041ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 49 of 109 PageID: 1855 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 49 (indicating), a crest and a trough. I have more than the minimum requirements set forth by the Federal Circuit under the Federal Circuit's definition of a wave. The view that BSC is arguing is that I have to do something more than show that I have a crest and a trough, and all of what they're saying is trying to get to somehow something that is Figure 8 or something very close to Figure 8, and that is not the claim construction. That is not how it reads. It's not what the Federal Circuit did. And it would have been wrong to limit the claim to a preferred embodiment. That's wrong as an approach and it is not the claim construction. We have the multiple waves here based on the Federal Circuit's definition of what is a wave. There's no requirement that it has to rise and then fall again to be a wave. The entire structure needs to rise and fall in waves. This has the two waves, using the Federal Circuit definition of waves, and the structure rises and falls. I would like to step back a little bit and address something that the Court of Appeals did here, which shows that it did not take the approach of saying, well, do these sort of kind of look like a U shape? If that were the approach that the Federal Circuit had taken, it would not have embarked on this rather painstaking inquiry into the precise location of where the U-loops are distinguished from Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 49 of 108 PageID #: 6042ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 50 of 109 PageID: 1856 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 50 the C-loops. It looked at this drawing. It made its own marks, A, B and C on the stent to delineate possible locations of where that demarcation might be. In so doing, it determined that the correct view was the B or C view, and it determined that based on that view, that NIR did, in fact, infringe. The implication is that the A view would have infringed, or at least that would have been an open question, but it shows that the infringement was a close call with respect to NIR, and it shows that the Federal Circuit was not saying, hey, does it sort of look like a U? If that were the case, all of these at a glance would have met that requirement. BSC has in its brief this picture and has flashed it up again today (indicating). This is a view of the NIR stent that Cordis urged in the Fischell I appeal. Cordis indeed argued that this red line (indicating) was what we should be looking at, that this was the view of NIR. The Federal Circuit did not adopt that view, did not adopt that view for four distinct reasons. First, that photo with the demarcation, the red line view, appears absolutely nowhere in the Federal Circuit's opinion. THE COURT: Well, neither does yours, does it? Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 50 of 108 PageID #: 6043ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 51 of 109 PageID: 1857 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 51 I mean, it certainly isn't particularly clear what the Federal -- well, I mean, the Federal Circuit's drawing and description isn't particularly clear either way, is it? MR. ZEGGER: I don't think they have a picture of what it is and it's not entirely clear. The clearest that we could get is the Federal Circuit's statement that this drawing here (indicating) on the left was not altogether clear. The Federal Circuit then said, well, the engineering drawings are better. And here is the engineering drawing that is cited right in the Federal Circuit's decision (indicating). And the Federal Circuit then said that, well, we have to be sure that we take the C loop and treat that as having an approximately constant curvature. If we do that, that's the structure that we receive, that we get following faithfully what the Federal Circuit did. If the Federal Circuit had adopted this (indicating) as the view of the NIR connector, that would have been the A view, which it clearly rejected. The Federal Circuit also would not have said that the U-loops are merely leveling out and they lack the change in direction required. Well, there is a change in direction here (indicating). There is a curvature here. The Federal Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 51 of 108 PageID #: 6044ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 52 of 109 PageID: 1858 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 52 Circuit also would not have said in its decision that a single curve cannot satisfy the undulating limitation. Why say that if the proper view of NIR was something that had multiple curves? So for all four of those reasons, the Federal Circuit did not adopt a view of the NIR connector that had multiple curves and a point of inflection. So this exercise that we saw here, trying to show that, well, under -- if we have a point of inflection, well, the NIR had it. No. BSC did that with a rejected view of the NIR stent. If we are taking the proper view of the NIR stent, it looks very much like this picture here (indicating), which was advocated by BSC. BSC told the Federal Circuit, this is the way we should be looking at NIR. NIR has a single curve, right here (indicating), and that is consistent with what the Federal Circuit did here, single curve. No points of inflection. And the Federal Circuit on that basis found that it was the lack of the requisite change in direction and, therefore, that NIR did not infringe. But if we're comparing the two structures, we cannot come to the conclusion that the NIR noninfringement decision precludes Promus from infringing. They are fundamentally different structures. One has one curve. One has three curves (indicating). There's no dispute that Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 52 of 108 PageID #: 6045ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 53 of 109 PageID: 1859 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 53 Promus has three curves. THE COURT: I know, but you are using language, legal rigor, faithfully compare, fundamentally different. I mean, honestly, this is a tough call and your using those sorts of words is not helpful. MR. ZEGGER: Well, I think the Federal Circuit struggled with NIR and that's why it was struggling to distinguish between the A and the B and the C of views here. My only point, your Honor, is that we clearly -- I think you're right. We have to look at Promus on its own merits, but it's equally clear that BSC's argument that the NIR noninfringement decision precludes Promus from infringing is simply not correct. What BSC has relied upon here and in its briefs are additional limitations that are not in either side's proposed claim constructions, and I have to concede, BSC's briefs read very persuasively, but they are relying upon views of NIR that were discarded by the Federal Circuit. They are relying upon requirements such as these -- well, that are not in their own claim construction, that there has to be a transition from falling to rising or rising to falling? That's not in the claim construction. THE COURT: Well, you know, claim construction ultimately is my responsibility, so whether it's in there Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 53 of 108 PageID #: 6046ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 54 of 109 PageID: 1860 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 54 or not, if I think I need it to clarify things, it will go in. So -- MR. ZEGGER: Okay. I have one final point, your Honor. We do not believe that in order to satisfy the undulating limitation, that there has to be a structure like Figure 8. But if that is demanded, if we need to find a structure like Figure 8 in Promus, it is there. That structure is in Promus, and is exactly like Figure 8 (indicating). The claim terms read a portion, a section. The entire connector doesn't have to be undulating, only a section. A portion of it needs to be undulating. So even if we demand that we have something that looked like Figure 8, we have it. It is part of the Promus connector, and that does not exist in the NIR connector. For these reasons, we believe that summary judgment is precluded. We think that Promus infringes, but at the very least, that there are factual issues, to the extent that there are legitimate ways of looking at the NIR stent, that must await trial. Thank you, your Honor. THE COURT: All right. MR. WOLF: If you can leave that up on the screen. Your Honor, we see on the screen exactly what I Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 54 of 108 PageID #: 6047ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 55 of 109 PageID: 1861 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 55 was talking about in my remarks. Let's compare the top to the bottom. The claim construction as affirmed by the Federal Circuit calls for rising and falling. It talks about leveling out. They can't deal with those two concepts, so what have they done? They've taken it and rotated it 90 degrees. This is not the structure of the accused product. This is. Can we switch, please? If there's one piece of the Federal Circuit opinion I would ask you to turn to when making your analysis, it's the language I discussed twice already. The U-loops thus merely level out and they lack the change in the direction required for literal infringement. That language does two things, your Honor. First, it completely disposes of the image, that V-shaped image that counsel just showed you that was purportedly what was in the Federal Circuit's mind when it reached its opinion. The U-loops level out in the Federal Circuit's view of what they're analyzing, just like they do in the accused product. The second part is that when we're talking about change of direction, your Honor will recall that counsel just mentioned change of direction multiple times. That is Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 55 of 108 PageID #: 6048ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 6 of 109 PageID: 1862 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 56 referring not to left-right, not to coming up to rising and then leveling out. It's about the fact that it then does not fall. Remember, it had already accepted rising and falling in waves. And what this is saying is, these U-loops rise and then flatten out, but they don't fall. The change in direction is what creates the second wave, and that second wave is essential for there to be an undulating longitudinal. And your Honor raised the fundamental point. It does not matter how we characterize it. Can we go to the picture of them side by side? I'm sorry. It doesn't matter how we characterize the device. It doesn't matter what pictures we draw on it. It doesn't matter what color we shade it. What matters, your Honor, as counsel just said, and I quote, "Structure is not in dispute." Simple question. How does the structure that's on the screen compare to your Honor's claim construction as described in the Federal Circuit opinion? And we would submit that if we simply look at the structure -- don't believe our coloration or counsel's coloration, just look at the structure -- how is it that the device on the left can be said not to rise and fall in waves, but the device on the right could be said to do so? Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 56 of 108 PageID #: 6049ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 57 of 109 PageID: 1863 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 57 If anything, your Honor, the NIR stent is slightly more rounded. There's slightly more curvature. If there was any kind of differentiation, it would be in favor of finding the NIR stent met the limitation. But the Promus stent is a single U, and as I explained in my opening remarks, as Cordis said, last case. The claim construction proposed by BSC at the time, adopted by your Honor, affirmed by the Federal Circuit, does not cover a U. That is a wave, not multiple waves. Thank you. THE COURT: All right. Well, clearly, when I go about doing this analysis, I will not be comparing the pictures, and in the first instance I will be looking to see what the Federal Circuit said to see if it's illuminating and apply the language and the analysis of the Federal Circuit. So I think we need to move on to another claim. MR. WOLF: Thank you your Honor. MR. ZEGGER: Thank you, your Honor. MR. WOLF: With that -- oh, I guess Cordis is going next. You've heard the last of me today. I'm sure that's a great relief. Mr. Nilsson will take over the argument for the next segment. MR. ZEGGER: Your Honor, the next item on our agenda is the construction of circumferentially extending Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 57 of 108 PageID #: 6050ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 58 of 109 PageID: 1864 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 58 turn-back portion. I will be brief on this point. This is a term that appears in the '817 patent. And we have the Cordis construction on the left and the BSC on the right. We are relying upon a plain and ordinary meaning definition, and BSC proposes that the term have the same meaning as undulating. The term circumferentially extending, we don't think that really needs elaboration to -- it's pretty self-explanatory. To the extent that it needs explanation, it should mean extending in the direction of the stent's circumference. BSC hasn't offered a plain meaning definition of its own or challenged this one as the plain meaning. The turn-back portion is simply a portion that extends back in the general direction from which it came. That's the plain meaning. And, again, BSC is not offering a plain meaning definition of its own. It's not challenging it on that ground. In the specification, in Figure 8, we have a turn-back portion. It is the portion in blue (indicating). I don't think we need expert testimony on this point, but the only testimony that we do have is that one of ordinary skill in the art would readily see that, readily recognize that as a -- a circumferentially extending turn-back portion. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 58 of 108 PageID #: 6051ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 59 of 109 PageID: 1865 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 59 The plain meaning of the term should control here. Just last month, in April, the Federal Circuit decided the Aventis case; two months earlier, in February, the Thorner case. These came down after the claim construction briefing, and we provided those decisions to your Honor through a letter. And it's really emphasizing its -- it's five separate judges on the Federal Circuit emphasizing that we should only deviate from the plain and ordinary meaning under two circumstances. When one is -- when a patentee sets out a definition and acts as its own lexicographer. The second is when the patentee disavows the full scope of a claim term. The Court referred to these as exacting standards. And BSC makes no attempt to show that either circumstance has applied here. There is no explicit redefinition of the term, no disavowal of the claim scope. And BSC is trying to equate two terms that are really different. The undulating requires multiple waves. A turn-back need only turn back. Circumferentially extending, turn back and stretch around the circumference. But undulating, the crest and the trough can stretch in any direction. So different terms meaning different things, and it's wrong to equate the two. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 59 of 108 PageID #: 6052ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 60 of 109 PageID: 1866 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 60 BSC's main justification, main part of its brief, is essentially on validity. Their argument is that if we don't equate these two terms, well, then, the '817 patents are not valid. First, that's wrong on the merits, and we'll discuss that later in the context of their invalidity motion. There is a disclosure in the first application for the circumferentially extending turn-back portion. But even if there were validity concerns, that does not give rise to changing the claim construction. The maxim that we construe claims to be valid is extremely limited. It wasn't always so, but post Phillips, it is extremely strict. It's really only when you are on the razor's edge do you use this to construe claims, only when all tools have still left you with a claim that is ambiguous. And BSC has not tried to demonstrate that there's still some inherent ambiguity in the claims. So putting aside the lack of merit of BSC's validity-based arguments, they're simply not applicable here in the context of claim construction. In sum, we urge that the Cordis plain and ordinary meaning definition for the terms be adopted. They're essentially uncontested on that ground. BSC's construction is legally incorrect. It's contrary to the plain meaning. It's attributing identical meanings Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 60 of 108 PageID #: 6053ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 61 of 109 PageID: 1867 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 61 to -- THE COURT: Well, I mean, I actually would like to see the infringement argument on this, because if what you are saying is true, I'm curious to know what the turn-back portion is versus what the undulating section is. All right? MR. ZEGGER: I don't think -- I mean, BSC will correct me on this -- I don't think that BSC is contending that it does not infringe on the basis of there not being a turn-back, if turn-back is construed the way we are urging. THE COURT: But I mean, I'm sorry. But I've got these pictures in my mind of how you describe the undulating section that has multiple waves and if that same segment needs -- you know, I would like to see how this all fits together. If it's not the same, it's different, I would like to see a picture of how it's different, if you've got one. Can you describe it to me? I mean, if I'm -- if this is completely irrelevant -- MR. NILSSON: Your Honor, you're actually anticipating part of what I was hoping to discuss. THE COURT: All right. MR. ZEGGER: Okay. I will wait to respond to counsel. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 61 of 108 PageID #: 6054ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 62 of 109 PageID: 1868 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 62 THE COURT: All right. Yes. MR. ZEGGER: We think also that, as I said, BSC is essentially relying upon validity-based arguments that are not applicable here. And for these reasons, we urge that the Cordis proposed construction be the one that is adopted here. MR. NILSSON: Good morning, your Honor. I'm John Nilsson, and I will be discussing the turn-back portion. First, I think it's helpful to get a little bit of background on the '817 patent. It's the fourth of the five Fischell patents. It was filed in 2000. This is the full language of the claim that we've managed to cram onto this particular slide, but first I'm going to just be addressing this particular limitation, a connector having at least one circumferentially extending turn-back portion. This is the only asserted independent claim that does not require an undulating longitudinal. And let's talk about how that occurred. This language was not part of the original application. This amendment was submitted in October of 2002, after this Court construed undulating in the first case, in the Fischell I case, to require rising and falling in waves having at least a crest and a trough. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 62 of 108 PageID #: 6055ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 63 of 109 PageID: 1869 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 63 So in response, Cordis submitted a new claim, an amended claim, that did not have undulating, but instead had a connector having at least one circumferentially extending turn-back portion between its first and second end portions. So Cordis proposes, as they've already said, what they call an ordinary meaning definition, and the Court is exactly right in asking, how is that different? What are the implications of that? It is undisputedly a broader construction than undulating. Let me explain why. This is another deposition exhibit that Cordis' expert looked at in this case. He admitted that this structure would not be an undulation under the Court's construction of undulating, as clarified by the Federal Circuit, because it lacks a trough as well as having a crest. It has a crest, but it does not have two troughs or one trough at its base, because there's no curvature. So according to Cordis, this is, despite not being an undulating longitudinal, it would infringe claim 1 of the '817 patent because it is a circumference extending turn-back portion. It's a broader limitation, a broader element than undulating because it does not require both a crest and a trough. It requires merely a crest or a trough. That's the distinction. Now, we asked Cordis to show us where the Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 63 of 108 PageID #: 6056ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 64 of 109 PageID: 1870 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 64 support is for this concept in the patent, and they showed the same thing they just showed today, in this hearing. They pointed to Figure 8 of the Fischell patent. And they say, this is a turn-back portion. There's the support. Well, that's not what the patent says. The patent says that that is an undulating longitudinal. There is absolutely no disclosure in the patent of circumferential extending turn-back portion. The phrase is never even used. Cordis, in its opposition to our summary judgment brief, makes a rather remarkable statement. It claims that in its application it explained that the invention included modifications to the preferred embodiment, including those that would shorten the connectors and allow for fewer turn-back portions. There's no citation in the brief in support of that statement, and I would submit it's because there's no support for it. There's absolutely nowhere in the patent where it says that there can be modifications to the preferred embodiment, including those that would shorten connectors and allow for fewer turn-back portions. So this is why BSC has taken the position that turn-back portion should be interpreted congruently as not broader than undulating. And we believe that this claim construction position is fully supported by claim Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 64 of 108 PageID #: 6057ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 65 of 109 PageID: 1871 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 65 construction jurisprudence like Vitronics, like Phillips. Cordis, of course, disagrees for the reason that Mr. Zegger outlined in his presentation. He says, ordinary meaning should control. And he cites Aventis and Thorner for those propositions. Well, this is not a question of ordinary meaning in an original patent. If Cordis will stipulate to the priority date of the actual application, 2000, BSC would be fine to have ordinary meaning control. And this is why. And this shaves into our summary judgment position, but as Mr. Zegger suggested, the two questions are intimately related, and we've raised them in every brief together, in our claim construction briefs, and in our summary judgment briefs. To be entitled to the priority date of the first application, as Cordis insists, the claim language has to be supported by that application. That's black letter law. Why is that important here? Because there's intervening prior art. This is the Penn patent. If Cordis is saddled with, obliged to use the actual filing date for the '817 patent, it is absolutely undisputed that the Penn patent invalidates all of the claims. It has every single claim element, including circumferential turn-back portions. What is Cordis' response? It doesn't disagree Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 65 of 108 PageID #: 6058ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 66 of 109 PageID: 1872 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 66 that it has all of the elements of the asserted claims. It merely says, and this is the entirety of its response, that the Penn patent is not prior art. So what does that mean for our analysis today? This is a quote from the Tech. Licensing Corporation case, 545 F.3d 1316 at 1327. And we quote this in our brief. What it means is that the patent -- when the defendant, like Boston Scientific, has come forth with prima facie evidence that all of the elements in a claim are disclosed in a prior art reference that precedes the filing date of a continuation application, like the '817, at that point, the patentee, in this case, Cordis, it has the burden of going forward with evidence either that the prior art doesn't actually anticipate, which it hasn't done, or that it's not prior art because the claim is entitled to the benefit of a filing date prior to that, to the filing date of the prior application. And this requires the patentee, Cordis, to show not only the existence of the earlier application, but why the written description in the earlier application supports the claim. Cordis' argument is that Figure 8, because it shows a crest and a trough, supports a broader concept, a connector with just a crest or a trough, and that's how it's the support from the first application. That's their argument. It's contrary to the case law. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 66 of 108 PageID #: 6059ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 7 of 109 PageID: 1873 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 67 We've cited this case heavily in our briefing. We've cited it a number of times. Cordis has yet to distinguish it. It's strikingly similar to the case we have in front of us. In this case, there was a second patent filed in 2000. The validity of the claims of that patent turned on whether they were entitled to the original priority date, a 1996 priority date. In this case, the technology had to do with video game controllers. And so the original patent application described controllers with a single input member, operable in six degrees of freedom. The claims of the later application were broader. They covered a controller with one or more input members and less than six degrees of freedom. And they were deliberately so. They were written to cover a Nintendo system. But the problem was they also covered the prior art. So the response on the part of Anascape, the patentee, was, this was disclosed. We only removed limitations, the limitation for the fifth, the sixth degree of freedom, the limitation for a single input member. That's the same as what Cordis is arguing here. We've only removed a limitation for a crest as well as a trough. The Federal Circuit rejected that argument. It said, a description can be broadened by removing Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 67 of 108 PageID #: 6060ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 68 of 109 PageID: 1874 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 68 limitations. The claims were commensurately broadened in the later application when those limitations were removed. This is classical new matter. The same is true here. When Cordis removed the limitations after this Court's claim construction of rising and falling in waves, having both a crest and a trough, it commensurately broadened the claim scope, and this is classical new matter. So what does that mean? It means that just like Anascape, Cordis isn't entitled to the original priority date. It's only entitled to the priority date at best of the 2000 '817 patent. And just as in Anascape, because there's actually no dispute as to validity, if Penn is prior art, there's no dispute here. So Cordis can't have it both ways. Either turn-back portion means undulating, in which case we don't infringe for the reasons Mr. Wolf said, or the claim and the patent are not entitled to the 1994 priority date, and the claim is invalid. THE COURT: All right. Let's hear from Cordis. MR. ZEGGER: What we heard, your Honor, were almost entirely validity-based arguments, and as I pointed out, those are not really applicable to the issue of a claim construction here. Counsel said that we've broadened the claims. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 68 of 108 PageID #: 6061ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 69 of 109 PageID: 1875 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 69 In some respects, turn-back is broader. In some respects, it's more narrow than undulating. We've distinguished the cases they've cited, including Anascape in our briefs. You asked whether we could apply the turn-back to Promus, and I just wanted to point out that if we apply the circumferentially extending turn-back limitation to Promus, this would constitute such a feature (indicating). THE COURT: All right. Thank you. So I take it, do you have anything, any remarks about summary judgment, since I thought we were -- MR. ZEGGER: If those were also the summary judgment points, I will respond to those. THE COURT: I thought they were. MR. NILSSON: Your Honor, I have nothing more on the summary issue. I transitioned fully to it. THE COURT: All right. MR. ZEGGER: All right. Then I will address briefly those issues of summary judgment. And I think we're in agreement on the basic principles of law here, is that if the '817 patent claims have 112 support in the original 1994 application, then the motion for summary judgment fails. The motion for summary judgment is relying upon art that all -- is postdating 1994. There have been only continuation applications here, and BSC has conceded that all of the Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 69 of 108 PageID #: 6062ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 70 of 109 PageID: 1876 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 70 applications leading to the '817 patent are identical in all relevant respects. The support here is in, as I mentioned earlier, Figure 8. This is a circumferentially extending turn-back portion. The only person of skill in the art who has weighed in on this is Cordis' expert, who said one of ordinary skill in the art would recognize this to be a circumferentially extending turn-back portion. On that ground alone, that should defeat summary judgment. It's a -- essentially, a fact that BSC has not grappled with. There's no expert of BSC saying anything otherwise. The Patent Office has ruled on this issue twice, once during the ex parte prosecution, once during a re-examination, both times concluding that the claims were entitled to their 1994 date. And, of course, that's not dispositive, but it is significant, and it's something that BSC can't simply ignore as inconsequential. The BSC positions here are contrary to the controlling legal principles. There's no requirement that the word circumferentially turn-back portion be in the specification. We can add words in -- after the initial application is filed so long as they're describing the invention that is disclosed. And there is a disclosure here. The drawings can provide the written description Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 70 of 108 PageID #: 6063ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 71 of 109 PageID: 1877 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 71 support and, if fact, do so here. Here, we have a figure -- Figure 8 is providing support both for the turn-back portion limitation and the undulating portion limitation, and BSC's position seems to be that Figure 8 can't be used to support both. Now, Figure 8 is just a preferred embodiment. It's an example. It's not the only one that is possible here. And we don't -- we don't erase, we don't cross off Figure 8 as a source of 112 support simply because it also provides support for another claim term. I mean, the whole basis of claiming in patents is to claim different features, claims of different scope, and you can rely upon claims of -- that are relying upon similar disclosures in the patent here. I'm not going to dwell on the cases. I think we've distinguished the Anascape case and the other cases that have been cited in the briefs. Now, I did want to point out one case that was a case from your court, your Honor, and we cited it in our briefs and it's very similar to what we have here. The disclosure in the patent at issue in Cordis v. Medtronic had a picture with complete slots and half slots. And the claims were construed so that it would cover a plurality of slots. And the defendant said, wait a minute, wait a minute. There's no 112 support here because that would Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 71 of 108 PageID #: 6064ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 72 of 109 PageID: 1878 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 72 cover an embodiment made entirely of half slots. You don't have a disclosure of a stent which is covering only half slots. You disagreed, denied JMOL. The Federal Circuit affirmed the finding that the patentee, the specification, did not unambiguously limit the meaning of the term to the narrower embodiment. That's similar to what we have here. We're not simply limited with Figure 8 to exactly what was shown there. One of -- we're looking at it through the lens of one of ordinary skill in the art, and the only testimony that we have in that regard is from Cordis' expert, that there is a proper disclosure in the original patent. And on that basis, the motion for invalidity of the '817 patent should be denied. THE COURT: And when you say that these things don't need construction, that we should look at the ordinary meaning, as far as I know, having lived with stent litigation for an awfully long time, phrases like turn-back portion, I mean, they are not used in the art necessarily. They are just -- they are just looking at a picture and using words to describe what the picture shows; right? I mean that is basically what you all did? MR. ZEGGER: I'm not sure I follow you. In the application of the turn-back portion, I don't think there's any dispute that Promus has a turn-back portion the way we Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 72 of 108 PageID #: 6065ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 73 of 109 PageID: 1879 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 73 have construed it. THE COURT: But I'm just saying, claim construction is a use of words. MR. ZEGGER: Right. THE COURT: I ask you, and I will break it down. Number one, the phrase turn-back portion isn't a phrase that is necessarily used in the art generally. It is a phrase that was used in this patent and that's it. MR. ZEGGER: It's not a term of art. It's the ordinary usage of the word turn-back portion, and I think "portion" is a key part of the construction. It's a turn-back portion. I mean, the whole thing does not have to -- the whole structure does not have to be the turn back. Some part of the connector can be the -- some portion of the connector can be a turn-back. THE COURT: All right. MR. ZEGGER: That's the plain reading. THE COURT: All right. MR. ZEGGER: Thank you. THE COURT: Thank you. Actually, we've been at it almost two hours and since we're starting something new, why don't we just take a short break. MR. NILSSON: That's fine. I did have a couple Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 73 of 108 PageID #: 6066ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 74 of 109 PageID: 1880 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 74 responses. THE COURT: All right. Let's finish this up. MR. NILSSON: Sure. So there are a couple of points I wanted to respond to very briefly. First, the notion the Examiner, the Patent Examiner made a priority determination. PowerOasis is cited in our briefs. In the absence of an interference or rejection, the Patent Office doesn't make priority determinations. So the Patent Office didn't say this claim is entitled to a 2000 priority date. If we could go to 95, please. So actually 96, please. Sorry about that. So Mr. Zegger -- there we are, 96. Mr. Zegger referred to the testimony of Dr. Buller, said that creates in and of itself an issue of fact precluding summary judgment on this issue. Anascape says that's not true. The PowerOasis case says the same thing at 522 F.3d 1310. As I'm sure the Court is well aware, just having a conclusory statement on the part of an expert that some later claim language is supported in the written description in his or her mind is not sufficient to create a genuine issue of material fact. If we could go to 94, please, sir. Like Cordis, Anascape said, look, there's support in the patent. Here's the picture that shows what Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 74 of 108 PageID #: 6067ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 75 of 109 PageID: 1881 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 75 I'm talking about. But as in this case, the actual statement correlating to that picture didn't say anything about a claim language that's in the later application. Just like there's no statement, there's no description in the '817 patent that matches their argument now, that that discloses a turn-back portion. Finally, if we could go to 95, please. This seemed to be the meat of Cordis' argument, that Figure 8 is just the preferred embodiment. That under the case law, like the cases that it has cited, that claims are not limited to the preferred embodiment, and it didn't disclaim a broader concept than undulating. Well, the question, as Anascape posed it, is not whether they disclaimed a broader subject matter. The question is whether the original application sufficiently describes that later claimed subject matter. And there is no description or disclosure of a broader concept than an undulating longitudinal. Mr. Zegger admitted, it is a broader concept. It would cover a U-shaped longitudinal with only a crest and not a trough. It is a broader subject matter. They have attempted to enlarge their claims beyond the original specification. Anascape is directly controlling. I think the most telling aspect of Mr. Zegger's presentation is he did not appear to attempt to distinguish it on one ground. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 75 of 108 PageID #: 6068ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 76 of 109 PageID: 1882 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 76 MR. ZEGGER: Just on one quick point, your Honor. We did distinguish Anascape in the briefs. I think thoroughly distinguished that case. Counsel said that the Patent Office during prosecution did not address priority. You know, not in the sense of having an interference, but both in the ex parte prosecution and in their re-exam, there was art thrown against the claims that postdated 1994, and the applicants argued that they were entitled to the 1994 date and overcame the rejection. So there was a priority determination made twice by the Patent Office. And that's at footnote 8 of our opposition brief. We have the cites to the record in that regard. THE COURT: All right. MR. WOLF: Your Honor, counsel and I have already narrowed the remaining issues for oral argument. If you could give us your inclination as to timing, perhaps we could do an even better job of focusing the remaining time. THE COURT: Well, generally, I give three hours and we've been at it for almost two. MR. WOLF: Terrific. Thank you, your Honor. THE COURT: All right. MR. WOLF: We'll work from that. THE COURT: Good. Thank you. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 76 of 108 PageID #: 6069ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 77 of 109 PageID: 1883 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 77 (Short recess taken.) - - - (Proceedings resumed after the short recess.) MR. BAUMGARTNER: Your Honor, the next two claim terms that are disputed, four and five on our agenda, the plaintiffs are going to submit on the papers, and I believe BSC has got some comments on those issues, and we may respond very briefly, but otherwise, to save time, we'll just submit on the papers on those. THE COURT: All right. Thank you. MR. NILSSON: Can we switch to our presentation? Thank you. So, your Honor, there were a number of circumferential elements of the asserted claims and a number of them were briefed. For purposes of today, we're only going to be focusing on this particular element. It's of the same claim that I was just discussing, claim 1 of the '817 patent. And the reason why BSC wants to discuss this, and it will be content to rely on its briefing as to the other issues, is because if Cordis is right as to the construction of turn-back portion, then the only possibly novel, potentially novel aspect of the claims are circumferential rings. This Court previously in the Fischell I Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 77 of 108 PageID #: 6070ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 8 of 109 PageID: 1884 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 78 case recognized, there are two aspects of the Fischell invention. One are longitudinal that add to the flexibility of the stent. The other are circular rings that supply additional radial strength on expansion of the stent. Next slide, please. And the specification is very clear by what it means by circular structures, i.e., rings, almost a definitional phrase. And Figure 2 shows one. They're almost circular, almost perfectly circular when the stent is expanded, because that is what provides the additional radial strength that was one of the inventive concepts. Next slide, please. Cordis itself has recognized there were two inventive issues that the inventors were confronting, lack of flexibility, lack of radial strength. Next slide, please. How did it solve the problem of insufficient radial strength? Again, this is from Cordis' expert: A specific design of a ring which can open to a perfect or near perfect circle to improve hoop strength. Next one. The notable thing is that Cordis has taken the position that despite this was one of only two inventions, and all of the various asserted claims, all of the various patents that have been asserted, none of the asserted claims Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 78 of 108 PageID #: 6071ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 79 of 109 PageID: 1885 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 79 cover this invention, according to Cordis. And as far as we can tell, none of any of the claims cover it. Now, in the prior case, Cordis took the position, and the Federal Circuit candidly did agree, that if you have two inventive concepts, not every single claim needs to have either or both of the concepts. That was their argument and that has been their argument in this case as well, and we frankly expect them to reiterate it. But let's look at the clam language again. Can we turn to the next one? The claim language is at least two longitudinally spaced apart circumferential rings. Now, that's different from the way circumferential elements are described elsewhere, in the other asserted claims, or in claims that are not asserted. Could you turn to the next slide? For instance, claim 1 of the '240 patent doesn't claim circumference rings, it claims circumferentially relatively rigid portions. Claim 8 doesn't claim circumferential rings, it claims frame elements with the circumferential contour, and s on. Now, BSC believes, and it has laid out in its briefing its position that many, if not all of these circumferential elements, should be interpreted to require a circle or a near perfectly circle, circular shape on expansion of the stent. But, at a minimum, claim 1 of the Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 79 of 108 PageID #: 6072ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 80 of 109 PageID: 1886 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 80 '817 patent, which explicitly recites a circumferential ring, should be interpreted to have the limitations that the specification says a circular ring has, that it's perfectly circular, or nearly perfectly circular on expansion of the stent. And, your Honor, that is the sum of our argument. THE COURT: All right. Thank you. MR. BAUMGARTNER: Your Honor, very briefly, this is the relevant language in the claim, and the circumferential rings having closed ends are in the blue text in the lower half of the screen. You can see in the preamble that there's a distinction made between a first pre-deployment diameter and a second deployed diameter. And at the end of the preamble, it says, said stent in its first diameter comprising. So the first diameter is pre-deployment, and what that means is that the circumferential rings having closed ends, that's describing the pre-deployment ring. So it makes no sense to interpret circumferential rings having closed ends in the pre-deployment context in terms of what they look like after deployment because that's not what this is talking about. The premise of what you just heard from BSC Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 80 of 108 PageID #: 6073ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 81 of 109 PageID: 1887 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 81 is that turn-back portions are not novel in the context of claim 1 of the '817 patent. We certainly don't concede that. We believe that they were novel. There has been no prior adjudication of the contrary because this patent was never at issue in earlier litigation, nor was the phrase turn-back portion. And, in any event, you construe claims for what they mean in light of the claim language and the intrinsic evidence, not in order to preserve validity. So I think there's a fundamental legal flaw which underlies the BSC approach here. Thank you, your Honor. THE COURT: All right. Thank you. MS. FRIEDLIEB: Good morning, your Honor. I'm Linda Friedlieb on behalf of Cordis. We're actually going to skip the next item on the agenda and move to the one following that, which is labeled the expansion and contraction terms. These have become a shorthand for three rather long passages of claim language that appear in the independent claims of the '817 and '240 patent. None of this language appears in the '604 patent. The first, to provide you some context, the language is at the top of the slide from claim 1 of the '817 patent. It says, said connector having at least one Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 81 of 108 PageID #: 6074ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 82 of 109 PageID: 1888 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 82 circumferentially extending turn-back portion between its first and second end portions that can expand or contract in length as measured by the straight line distance between its first and second end portions, while being passed through a curved coronary artery. The crux of this dispute is that Cordis believes that aside from certain terms that we've already talked about or that have been briefed separately, there is no need to construe this claim language; that a jury will understand what it means to expand or contract in length by measuring from end to end. Boston Scientific's proposed construction, on the other hand, requires an additional limitation, essentially. It requires that the turn-back portion in its expansion and contraction "substantially enhance the flexibility of the stent as compared to a stent in which none of the connectors has a circumferentially extending turn-back portion." And you'll see this same language in the next slide -- I apologize, I don't have the clicker -- for claim 19 of the 240 patent. It's a similar passage from that, the end of that claim language. And, again, Cordis takes the same position and Boston Scientific adds the red language at the bottom in order to substantially enhance the flexibility of the stent. And you see it again in claims 21, 31 and 58. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 82 of 108 PageID #: 6075ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 83 of 109 PageID: 1889 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 83 It's all essentially the same issue, whether or not you have to compare a stent with the undulating or the turn-back portions to a stent that does not have them. In each case, this would substantially narrow the claim language, is our position. As was already talked about in discussing the turn-back portion limitation, in the recent Aventis and Thorner cases, the Federal Circuit repeatedly indicated that there are only two scenarios in which you narrow the claim language, one being the lexicographer situation, which I don't think anyone contends applies here, and the second is that the patentee disavows the full scope of the claim term during prosecution. It's our view that that position doesn't apply here either. Instead, what we see is that Boston Scientific is trying to read in these additional requirements in order to serve the purpose of the invention. And there has been lots of discussion about what the purpose of undulating is both in the last litigation and in this case, that it's intended to create a more flexible stent. But there's no disavowal based on this kind of functional limitation and requirement that it be compared with a stent that is without those connectors. In its surreply on claim construction -- wrong direction -- for the first time, Boston Scientific refers to Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 83 of 108 PageID #: 6076ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 84 of 109 PageID: 1890 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 84 a bunch of different passages, of different amendments and different responses to office actions that appear in the prosecution. I'm not going to go through them all, your Honor, because I think they all sort of make the same point. Boston Scientific basically argues that based on passages like this one, that you have to have a substantial increase in flexibility. But that is not what these passages say. In each of these cases, what was happening is the distinguishing of a patent with either straight connectors or other connectors that Cordis or the applicant at the time felt was not undulating. And so the -- or was not the turn- back, in some cases. Some of the passages are from the '817 prosecution history. There's no reference in any of these passages to substantially enhancing the flexibility of the stent that compares to the stent in which none of them has an undulating portion. That's just additional language and we don't believe it's justified. There certainly is no clear and specific disavowal of claims. In this particular passage, they're talking about the Scrow (phonetic) patent. It is kind of hard to tell from the passage. And that particular stent has straight connectors. So in conclusion, your Honor, it's Cordis' position that the -- that these claim terms should just -- Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 84 of 108 PageID #: 6077ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 85 of 109 PageID: 1891 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 85 they don't need construction, other than the terms that have been separately addressed. Thank you. THE COURT: All right. Thank you. MS. ZOGG: Good morning, your Honor. Sara Zogg for the defendant. So, your Honor, we're looking here at the claim language and in particular the construction that Boston Scientific is proposing. There's no dispute between the parties that the claim language that's at issue, expand or contracts in length as measured by the straight line difference between the first and second end portions, is functional language. The '240, claims 21, 31 and 58, which not are listed on the slide, have similar language in that they all require expanding and contract in length. So let's just talk briefly about why this matters. You heard Ms. Friedlieb suggest that Boston Scientific was attempting to limit the claim construction to the purpose, but what we have here in the specification is it tells us what the functional language is supposed to accomplish. The specification doesn't tell us how to measure expansion and contraction, but it does tell us why it matters. What it says is, that the undulation or the Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 85 of 108 PageID #: 6078ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 86 of 109 PageID: 1892 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 86 turn-back portion makes the stent more readily adaptable for use in curved arteries. It improves placement in curved vessels and it assists the stent to bend more easily. What we know is that not any undulation and not any turn-back will work for that purpose or for that function. What the inventor told us, this is Robert Fischell, one of the named inventors -- and what he told us is not any kind of curve is going to work. If you don't have enough curvature, then it's not going to have much effect. He went further to say there has to be some reasonable amount of bend, some reasonable displacement along the circumference. And that gets right to the point in the slide that we just looked at, which is what the specification tells us the function is. So looking again, Ms. Friedlieb had also referenced some of the statements that the patentee had made in attempting to secure the approval of its claims. And what we look at here when we look at this, repeatedly, the patentee distinguished over prior art that had straight longitudinals. This is the first example in 1995. We have another example where they're distinguishing over the Lau patent. This happened in 1996. And what it says is, that it is necessary -- it's a necessary function because it has Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 86 of 108 PageID #: 6079ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 87 of 109 PageID: 1893 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 87 to help allow for expansion and contraction in length as the stent is bent. For the third time, in 2002, they were distinguishing over Lau. And what they said was that the turn-back portion -- and this is with reference to the '817 patent -- they're present to provide enhanced longitudinal flexibility. And, again, so what we know is the straight connectors supposedly won't do that. A connector that has just a little bit a curve supposedly won't do that, but the invention will do that. The invention enhances longitudinal flexibility of the stent. And it was these representations that the Patent Examiner relied on in allowing the claims. So looking again at the construction proposed by Boston Scientific, we can't be in a situation where we only have minimal or de minimis expansion and contraction that enhances flexibility in only a minimal way. That does not meet what the inventors were trying to accomplish. That does not improve over the prior art. That's why BSC has proposed a construction that will require it to substantially enhance the flexibility of the stent as compared to a stent with only a straight connector, and that's exactly what they told the Examiner. Thank you, your Honor. THE COURT: All right. MS. FRIEDLIEB: Your Honor, I just have two very Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 87 of 108 PageID #: 6080ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 88 of 109 PageID: 1894 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 88 quick points. The first point is that Boston Scientific repeatedly has relied upon inventor testimony. I think it's clear Federal Circuit law that inventor testimony, especially inventor testimony that's more than a decade after the specification or the claims were written, or at least for the specification, the claims were written later, shouldn't inform in this case. And it's just one cite in a case called Cordis versus Boston Scientific. You know, 561 F3d. At 1329. You know, they make that clear. The second point I just want to make is in each of these passages that was shown by Ms. Zogg, they were distinguishing those particular things for not having an undulating or a turn-back portion. And then they said, and that would increase flexibility. That is not a clear and unmistakable disavowal and none of those passages contain the language that Boston Scientific is using in its claim construction. Thank you. THE COURT: All right. MR. BAUMGARTNER: Your Honor, we're down to the next-to-the-last topic on our agenda, and this is the Daubert motion to exclude certain opinions of a technical expert, James Moore. We're not asking that his testimony be excluded Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 88 of 108 PageID #: 6081ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 9 of 109 PageID: 1895 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 89 in its entirety, your Honor. There are only four areas where we think there are reliability issues, and the request is that you bar his testimony in these four areas. And let me review them one by one. The first is, we would ask that you bar his testimony about whether the Promus connectors are undulating. And the problem here is that he has applied a standard for evaluating undulating which differs from your claim construction in the NIR case and also with the Federal Circuit's affirmance of that. And I can demonstrate the problem with this exhibit from his deposition. Moore testified that the structure shown here is not undulating, as he understands the term in the claim. And that simply can't be so. This structure has three crests and three troughs, it rises and falls in waves, it has changes in direction beyond points of inflexion, and it clearly has multiple waves. So it's an undulation under the constructions that were employed in NIR and under the constructions that have been proposed by both sides in this case. His argument, your Honor, is that the crests and troughs are all above this longitudinal line, but that is not a requirement for undulation. No one has proposed that in this case. That wasn't adopted by your Honor in the NIR litigation. It wasn't discussed by the Federal Circuit. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 89 of 108 PageID #: 6082ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 0 of 109 PageID: 1896 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 90 And so if this is the standard of undulation that this witness is applying, it's the wrong standard and his opinions are unreliable. So next, topic one. Topic one is that he's going to be the witness that BSC relies upon if you accept the claim construction that was just argued, where they are asking for this comparison of flexibility for a stent with and without undulating connectors. And Moore would come forward and testify that when you do that comparison, in his opinion, Promus is not flexible. The problem is, that he does not have a reliable basis for expressing an opinion on flexibility, and the reason is that the sole basis for his opinion is a computer simulation that others did and that he relies on. And the problem is that he admitted at his deposition that the computer simulation didn't measure flexibility, either directly or indirectly. So if the computer simulation doesn't relate to flexibility, it doesn't support a conclusion about flexibility, but that's all the basis he has for it. So our view would be that his opinions on flexibility should be excluded. Next, there's a potential doctrine of equivalents issue in the case that will turn on how your Honor construes the claims. And the issue has to do with Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 90 of 108 PageID #: 6083ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 91 of 109 PageID: 1897 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 91 whether the two points of support in the Promus connectors are equivalent to more than two points of support. And Moore offers an opinion on whether two is equivalent or not equivalent to more than two. The problem with his opinion and the reliability difficulty here is that he uses the wrong yardstick for assessing equivalents. The relevant question is, is the two in Promus equivalent to more than two that your Honor may require in your claim construction if you adopt the BSC view? That's the question. But instead of addressing that question, he compares the two in Promus with connectors that would run the entire length of the stent and connect all of the -- all of the things that need to be connected. And that's not the relevant basis for comparison here, and therefore he's using the wrong yardstick, and the opinions he reaches on this equivalence opinion are not reliable and should be excluded. And last, your Honor, he is being put forward to offer testimony on infringement where he does a comparison of Promus to NIR. And we believe that that is not proper expert testimony because it involves a comparison that's irrelevant as a matter of law. The relevant basis for deciding infringement is comparing Promus to how your Honor construes the claims, and that ought to be the focus of the trial. For him to come and testify before the jury to Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 91 of 108 PageID #: 6084ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 92 of 109 PageID: 1898 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 92 appears how Promus compares to NIR is just likely going to lead to confusion. And there's a further practical trial problem here, your Honor, I think, which is that if we get into this, we're going to have competing expert testimony about how the experts interpret what the Federal Circuit did in its affirmance of your Honor's ruling on NIR, and there's going to have to be a whole inquiry into what the structure of the NIR stent was and how does NIR compare to Promus, and that's a side show given the limited time that we have in this trial. So what we would ask, your Honor, is that you rule that the focus in the infringement testimony by Moore and all the other experts has got to be on the comparison of the claim language to the accused structure, and there shouldn't be any comparison of Promus to NIR because that's -- that's not really the issue and it's a distraction. THE COURT: All right. Thank you. MR. BAUMGARTNER: And that's our position, your Honor. THE COURT: All right. MR. BAUMGARTNER: Thank you. THE COURT: Thank you very much. MR. HAN: Good morning your Honor your Honor. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 92 of 108 PageID #: 6085ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 93 of 109 PageID: 1899 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 93 Ed Han. Good to see you again. It's still morning. THE COURT: Yes. MR. HAN: Maybe we can finish while it's still morning. The first point I'd like to make, your Honor, is that Cordis is not challenging Dr. Moore's qualifications to assist the jury. Dr. Moore is a full professor in the biomedical engineering department at Texas A&M, earned his Ph.D. in mechanical engineering in 1991. He has teaching and research experience in both engineering departments and in medical school settings, and he has done substantial work in his career specifically with regard to cardiovascular stents. There is not really a challenge to the reliability of his -- of his methodology. It is under the third prong of Daubert, the question of fit. And with respect to both the issues that Mr. Baumgartner raised as well as some that he didn't touch upon today in their briefs, we think it's clear that in every case, Dr. Moore is actually rebutting an issue that was raised by Cordis or its expert, Dr. Buller. And so it's hard to imagine anything that fits the case other than direct rebuttal to a point the other side raised, and we think that the real issue of fit in this case for Cordis is that their facts do not fit their theory of infringement or Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 93 of 108 PageID #: 6086ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 94 of 109 PageID: 1900 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 94 their claim constructions. Let me start with the last point, the suggestion that Dr. Moore is conducting an infringement analysis by comparing the Promus stent to the NIR stent. Okay? We think it's very clear, most of this -- most of the facts underlying my argument were established today, that the relevance of the NIR stent was placed into issue by Cordis. It is Cordis who, after resisting a stay, waited until the Federal Circuit came down with the ruling about the NIR stent and demanded an opportunity to re-do their claim construction and their infringement. It was Dr. Buller, their expert, who, in light of -- in light of that ruling, admitted that his prior opinions in the case were incorrect, and who -- Dr. Buller, who, using the ruling, the Federal Circuit's language in the NIR decision, introduced new concepts of point of inflection and basically introduced a new theory of construction as well as infringement. And so what we are talking about in terms of Dr. Moore's analysis of the NIR stent is pure rebuttal to this. What Dr. Moore did -- okay. You've seen this before. We've used this today. This is the expert support for the position that Mr. Wolf addressed this morning. And basically, what he did was to apply Dr. Buller's analysis, the slanted, dotted line, to the NIR Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 94 of 108 PageID #: 6087ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 95 of 109 PageID: 1901 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 95 stent, which, you know, we think any -- any first year law student would recognize what's going on here. That you are using the facts of the case -- in this case, the structure of the NIR stent -- to elucidate the holding of that case. In other words, how the Federal Circuit interpreted your construction in affirming it. That is a pure rebuttal to Dr. Buller's new position, and we cannot see how there is any question that that is an appropriate fit, an appropriate position, or a methodology for Dr. Moore to take. Basically, by using this analysis, he has illuminated the proper construction of undulating and not comparing the NIR stent, but comparing that construction to the Promus stent, to conduct his infringement analysis. Let's skip to No. 9. I need to address this even though Mr. Baumgartner didn't. In the briefing, you'll see, your Honor, that what they were arguing about is actually above or below the level of the axis. This is the language that they took issue with. And to make my -- to make my point, again, this was in the nature of pure rebuttal to positions that Cordis has taken. Dr. Moore had to use this language. And so what you have is, in the box there, that is Dr. Buller, Cordis' expert, acknowledging that in the case of Figure 8, the only Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 95 of 108 PageID #: 6088ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 96 of 109 PageID: 1902 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 96 figure in the specification depicting a longitudinal -- undulating longitudinal, that what he says is that the line that he would draw, the dotted line that he would draw in this particular preferred embodiment would be running parallel to the longitudinal axis of the stent of the whole. And so basically Dr. Moore says that that is entirely consistent with his view that there's a crest, the blue, that rises and falls, and then there's a trough that falls and rises. And he picks essentially the same longitudinal axis that Dr. Buller does, and that is entirely consistent with the Court's claim construction as well as with Dr. Buller's admission in this case. Now, what Mr. Baumgartner started with was a -- a different version of a stent that, it isn't Figure 8 and it isn't Promus and it isn't NIR, and it's something else that was shown to him. And this was his actual response when he was shown that Exhibit 143. He says, I don't think it does, but, I mean, you're showing me something I've never seen before that, you know, it's a collection of lines and arcs, maybe. I don't think it would. That was his answer. Now, we don't think it's unfair to give an expert a hypothetical, and he addressed it, but we don't see how that's an issue of fit. If somehow in this answer or this set of answers, Cordis thinks that Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 96 of 108 PageID #: 6089ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 97 of 109 PageID: 1903 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 97 there's some internal inconsistency to Dr. Moore's testimony, well, they can cross-examine on that, but the reality is, you know, this is a question that was directly put to him by Cordis' counsel. We would have to assume from that that there's some relevance, that it is relevant to the issues in the case and cannot raise a question of fit for purposes of Daubert. Let's talk about the contraction and expansion. This is what we're talking about, your Honor. So there are two issues raised in their brief. I think one of them was very quickly addressed by Mr. Baumgartner, so I will touch on it and then I will address the other one as well. There is a question that they raised as to whether there was a proper comparison between a straight connector, what I depicted in blue on the bottom, and a Promus style connector, U-shaped connector. And they raised the question. They said, well, they didn't directly compare the U-shaped connector to a straight connector. And the issue in the case is, actually under the claim language, is whether the -- the U-shaped contributes to the flexibility by its ability to expand and contract. And that's what Dr. Moore's model measures. He takes -- when you bend the -- the stent, the internal and external lines, one shortens and one lengthens. And the question is, based on his computer model, how much that the Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 97 of 108 PageID #: 6090ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 98 of 109 PageID: 1904 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 98 legs of the U open up or compress in order to -- in order to measure the contribution of that shape to that stretching. Okay? And so their first complaint is that there isn't an express modeling of the straight connector, but our point here with this simple diagram is, you can see, your Honor that there is not going to be any actual -- there's nothing to open up. There's nothing to expand or contract in a straight connector. So the assumption, the implicit assumption in the modeling is that that contribution is zero or de minimis for the straight connector. And so that addresses the first one. But it also sets up our response to the second point, which is what Mr. Baumgartner focused on. He focused on the question of whether the model measures flexibility. And Dr. Moore correctly said, no, we did not provide a measure of flexibility. And what he would mean by that, presumably, is that the question of how much force is required to bend the stent to a certain degree was not measured, but it's not the issue. The issue is the contribution of this shape to the expansion or contraction of those circumferential distances. All right. I think the last thing Mr. Baumgartner touched on was doctrine of equivalents. Their gripe seems to be that in assessing the Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 98 of 108 PageID #: 6091ase 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 99 of 109 PageID: 1905 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 99 function, way, result analysis required by DOE, Dr. Moore used examples of stents that were not identical with the structures called for by the claim constructions or by the devices in question. And, again, we think that that is potentially an issue for cross-examination, but it isn't a question of fit. All of Dr. Moore's analysis -- I don't think Mr. Baumgartner suggested otherwise -- was directed, was an attempt to focus on the very issues raised by DOE, whether something with a similar function achieves a result in a similar way. So at best it's an issue of weight. It does not implicate your Honor's gatekeeping functions in the Daubert. MR. BAUMGARTNER: One brief point, your Honor. Mr. Han said that the witness' testimony about the figure on the screen was somewhat equivocal, and that perhaps he didn't really have the opinion that undulating curves had to be above this longitudinal line (indicating). But it's not just in his deposition, your Honor. It's in his expert reports as well. There was a December 20, 2011 supplemental report from this witness, which is Exhibit 2 to the moving papers. In paragraph 26, he says, the direction and circumferential level of the axis of the longitudinal -- and he's talking about, that is what he means by the axis of the Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 99 of 108 PageID #: 60923 6 928 PGS LHG 96-3 Filed 02/28/17 Page 100 of 109 PageID 1906 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 100 longitudinal, I believe (indicating). The axis and circumferential level of the axis of the longitudinal which is parallel to the axis of the stent is the proper reference for determining whether there are arcing curves. And the reason he said this was an arcing curve was because the waves and crests were all above this longitudinal level. And that's not in anyone's proposed claim construction. The Federal Circuit never said that. You never said that. And, therefore, an opinion based on that standard for undulating doesn't have a fit to the issues in the case and it's not reliable either because that's not required. THE COURT: All right. Thank you. MR. HAN: Your Honor, we're going to address the final motion today. I have to do this in about 180 seconds or you will yell at me if I hit 200. This goes to -- this motion goes to Dr. Buller, an interventional cardiologist. THE COURT: I'm really aware of who Dr. Buller is. MR. HAN: All right. Qualifications to testify about the aforementioned finite element analysis. His FEA is a computer simulation of certain structures. You input data on the materials. You apply to this virtual object virtual forces and you see how it bends and forms without actually having to build the structures to test them. It's Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 100 of 108 PageID #: 6093 Case 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 101 of 109 PageID: 1907 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 101 clearly not a medical technique. It's a mechanical engineering technique. Interestingly, Cordis has retained and provided the testimony of a mechanical engineer, a Ph.D. mechanical engineer, Dr. Steven Weinberg, but they were very, very careful to limit Dr. Weinberg's testimony. He created a test apparatus. He ran a test on a physical device and he took pictures of it, which he provided to Dr. Buller. And as you can see here, they went out of their way to limit his testimony. It's a very short report. It's about six pages, all about his tests that he created and performed. And then he says, I'm not offering any opinions anyway. Okay? Now, so basically their response to, or their discussion of the FEAs in question in this case are all -- all come from Dr. Buller. This is what Dr. Buller says. Let me make absolutely clear, I'm no expert of finite element analysis. That was his sworn testimony. Okay? And in opposing our motion, Cordis itself comes pretty close to echoing that: Dr. Buller is not an expert in performing finite element analysis. The way they approach this is to say, well, he -- you know, he's not an expert in performing, designing in the methodology of FEA, but he can talk about the results because he has read papers where the results have been Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 101 of 108 PageID #: 6094 Case 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 102 of 109 PageID: 1908 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 102 talked about. And so we're going to talk about the results. Well, first of all, we would question whether -- well, for example, your Honor has presided over a number of cases about interventional cardiology devices, or I, myself, for another example, have read dozens, maybe hundreds of medical journal articles in my work for Boston Scientific. I don't think under the standards of Daubert that qualifies us as experts in interventional cardiology. But that isn't even our main argument on this motion. The other reason why Dr. Buller cannot opine, there are two FEAs at issue in the case. One was performed under the supervision of Dr. Moore in 2011, specifically in connection with his work on the case. Dr. Buller has not offered an opinion as to the results of that test, so that would exclude his testimony for that. With respect to the other one, an internal BSC FEA performed in 2008, that testimony is excluded by a ruling by Judge Thynge on a motion by Boston Scientific some months ago. Boston Scientific had produced the information about the 2008 FEA well in advance of when Dr. Buller's expert report was due on the issue of infringement. He neglected to raise that information in his report. And then after your Honor granted leave to supplement their -- their infringement theories in the wake of the Federal Circuit ruling, they tried to slip in a couple of paragraphs about Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 102 of 108 PageID #: 6095 Case 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 103 of 109 PageID: 1909 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 103 the 2008 FEA. After a motion, Judge Thynge struck those results, the 2008 FEA results, and awarded costs for our motion. Now, she did allow them to compare the results. She said, you can't talk about the 2008 results, but you can compare the 2008 FEA to the 2011 by way of sort of impeachment, I suppose, of Dr. Moore's work. The problem is, if they can't talk about the results, they can only talk about the methodology, the design, frankly, I don't see how he can compare the two tests without looking into the methodology, the design and the performance of the two studies. And so what we're left with is, they've told Judge Thynge, we are only going to look at the methodology. We won't look at the results. They can now come before to say, we're only going to look at the results, we're not going to look at the methodology. Dr. Buller is not an expert on FEA. He should not be allowed to talk about the methodology or the results. Thank you. MS. FRIEDLIEB: Good morning again, your Honor. I guess I'm bringing up the end. As your Honor said, you're well aware of who Dr. Buller is from past litigation, so I'm not going to go through his qualifications. Under Rule 702 and 703 and Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 103 of 108 PageID #: 6096 Case 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 104 of 109 PageID: 1910 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 104 Third Circuit law, an expert can be qualified by skills or experience, and specifically under Rule 703, may base an opinion on facts or evidence experts in their field would reasonably rely on those kinds of fact or data in forming an opinion on the subject. Cardiologists, especially those working with stent designers, routinely review, analyze and work with engineers doing finite element analysis in order to improve stent design, in order to understand how stents function before they can begin using them. This happens constantly. Dr. Buller so testified. There was other evidence in the record about other cardiologists doing so, publishing on it, et cetera. Dr. Buller in this case did, in fact, testify that he does not do finite element analysis, but every time BSC puts forth those quotes, they truncate them. What I'm putting up right now is -- THE COURT: I mean, I'm, frankly, amazed. I don't recall, and maybe you can refresh my recollection, because this litigation goes back -- well, the first stent case was filed in 1997 here, so I've had a few interventional cardiologists testify in my courtroom. I can't remember any of them telling me -- you can tell me if I'm wrong, please -- that as a matter of course, unless they're strictly in the business of designing stents, that they, as interventional cardiologists, review Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 104 of 108 PageID #: 6097 Case 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 105 of 109 PageID: 1911 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 105 to the point where they have an expertise in reading finite element analyses to determine the flexibility or whatever of stents. Is that what Dr. Buller is saying? MS. FRIEDLIEB: He's saying that, for instance, when they do clinical trials of new stents, that this is among the kind of data that doctors review when they look at stents before they start using them in order to assure, talk with patients, explain what's going to happen, especially with new stents. That they oftentimes especially want to work with stent designers, but they don't perform finite element analysis. And Dr. Buller -- THE COURT: I realize, but I'm questioning the reality that they -- I mean, doctors barely tell you what a stent is or what is going in to you in my experience with friends and relatives who have gotten stents, let alone explain to a patient, I've chosen this because I reviewed the finite element analysis and I've determined by that data, that this is the best stent for you. MS. FRIEDLIEB: I think -- THE COURT: I mean, honestly, that strikes me as almost ridiculous. MS. FRIEDLIEB: I think there's a difference between routine daily practice and people like Dr. Buller, Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 105 of 108 PageID #: 6098 Case 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 106 of 109 PageID: 1912 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 106 who worked with clinical trials, with new products, where they're being the first people to put those kinds of stents into people. So I'm not sure that you're right, your Honor. I'm not sure whether the average cardiologist who just, you know, does this with already approved products. But in the case of Dr. Buller and in the case with other cardiologists like him who are in -- at the outset, who work with companies like Boston Scientific or Cordis or Abbott or Guidant, when they're developing stents, they do see this kind of data, and that is the basis of his testimony. He testifies that he has seen it a lot in his career. The other distinction I want to make is that Dr. Buller here is not -- he's not performing a finite element analysis. He's not even second-guessing -- THE COURT: But the difference between seeing it and having some expert say, this is a stent that you're going to be using in this trial, and this is kind of the background data just so you know what you're putting in these patients, there's a difference between that and being able to see data and testify about it as though -- MS. FRIEDLIEB: Right. THE COURT: -- they were an expert. MS. FRIEDLIEB: I think there's a side step here, your Honor, which is that Dr. Buller doesn't and Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 106 of 108 PageID #: 6099 Case 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 107 of 109 PageID: 1913 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 107 hasn't purported to look at the underlying data. He hasn't looked at the material. What he has looked at is what BSC has produced, which is, in the case of the 2008 finite element analysis, the data was lost. All there is the materials explaining what they concluded and charts showing what they concluded. In the case of the 20111, he looked at the results and the material that is provided by Dr. Moore, and he has looked at the testimony of the individuals from Boston Scientific who testified about what they did, how they did it, et cetera. And what he is doing in this case is just comparing and contesting the two as applied to the portion of the claim construction I discussed earlier, which is the substantial flexibility question, whether that additional evidence is added in, as BSC your Honor. And so all he's doing is taking the materials the same way he would analyze other materials, such as FDA submissions and other things, and figuring out how it applies into the infringement analysis. He's qualified by his skills and his experience to do that. THE COURT: I don't agree, so that motion is granted. All right. Is there anything else? And I will write something up so that you have something to appeal. MS. FRIEDLIEB: Thank you. Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 107 of 108 PageID #: 6100 Case 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 108 of 109 PageID: 1914 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 108 As a housekeeping matter, your Honor, we have copies of the slides that were used today. They do include some slides that were skipped over by agreement of the parties not to address particular issues. May we hand up copies? THE COURT: Yes. (Mr. Baumgartner handed slides to the Court.) MR. BAUMGARTNER: Thank you, your Honor. MR. WOLF: Similarly, your Honor. (Mr. Wolf handed slides to the Court.) MR. WOLF: Thank you, your Honor. Have a good weekend. THE COURT: All right. Thank you very much. Counsel, as always, you present me with interesting, complex issues, and we will certainly get to this before the pretrial conference. Hopefully, sooner than I usually do, but I can't promise anything. So I have to get out of my computer, so go home. Have a good weekend. I need to clear my bench. Thank you. (Counsel respond, "Thank you, your Honor.") (Court recessed at 12:15 p.m.) - - - Case 1:10-cv-00039-SLR-MPT Document 275 Filed 09/20/12 Page 108 of 108 PageID #: 6101 Case 3:16-cv-00928-PGS-LHG Document 96-3 Filed 02/28/17 Page 109 of 109 PageID: 1915 EXHIBIT C Case 3:16-cv-00928-PGS-LHG Document 96-4 Filed 02/28/17 Page 1 of 9 PageID: 1916 Case 1:10-cv-00039-SLR-MPT Document 142 Filed 08/11/11 Page 1 of 8 PageID #: 8383 6 928 PGS LHG 96-4 Filed 02/28/17 Page 2 of 9 PageID: 1917 Case 1:10-cv-00039-SLR-MPT Document 142 Filed 08/11/11 Page 2 of 8 PageID #: 8393 6 928 PGS LHG 96-4 Filed 02/28/17 Page 3 of 9 PageID: 1918 Case 1:10-cv-00039-SLR-MPT Document 142 Filed 08/11/11 Page 3 of 8 PageID #: 8403 6 928 PGS LHG 96-4 Filed 02/28/17 Page 4 of 9 PageID: 1919 Case 1:10-cv-00039-SLR-MPT Document 142 Filed 08/11/11 Page 4 of 8 PageID #: 8413 6 928 PGS LHG 96-4 Filed 02/28/17 Page 5 of 9 PageID: 1920 Case 1:10-cv-00039-SLR-MPT Document 142 Filed 08/11/11 Page 5 of 8 PageID #: 8423 6 928 PGS LHG 96-4 Filed 02/28/17 Page 6 of 9 PageID: 1921 Case 1:10-cv-00039-SLR-MPT Document 142 Filed 08/11/11 Page 6 of 8 PageID #: 8433 6 928 PGS LHG 96-4 Filed 02/28/17 Page 7 of 9 PageID: 1922 Case 1:10-cv-00039-SLR-MPT Document 142 Filed 08/11/11 Page 7 of 8 PageID #: 8443 6 928 PGS LHG 96-4 Filed 02/28/17 Page 8 of 9 PageID: 1923 Case 1:10-cv-00039-SLR-MPT Document 142 Filed 08/11/11 Page 8 of 8 PageID #: 8453 6 928 PGS LHG 96-4 Filed 02/28/17 Page 9 of 9 PageID: 1924 EXHIBIT D Case 3:16-cv-00928-PGS-LHG Document 96-5 Filed 02/28/17 Page 1 of 78 PageID: 1925 DM_US:23362604_1 No. 2012-1647 ________________________________________________________ UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT ________________________________________________________ CORDIS CORPORATION, Plaintiff-Appellant, v. BOSTON SCIENTIFIC CORPORATION and BOSTON SCIENTIFIC SCIMED, INC., Defendants-Appellees. ________________________________________________________ Appeal from the United States District Court for the District of Delaware in case no. 10-CV-0039, Judge Sue L. Robinson. ________________________________________________________ NONCONFIDENTIAL BRIEF OF DEFENDANTS-APPELLEES BOSTON SCIENTIFIC CORPORATION and BOSTON SCIENTIFIC SCIMED, INC. Matthew M. Wolf Edward Han John E. Nilsson Seth I. Heller ARNOLD & PORTER LLP 555 Twelfth Street, N.W. Washington, D.C. 20004 Telephone: 202.942.5000 Facsimile: 202.942.5999 January 16, 2013 Counsel for Defendants-Appellees Boston Scientific Corporation and Boston Scientific Scimed, Inc. Case: 12-1647 Document: 25 Page: 1 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 2 of 78 PageID: 1926 DM_US:23362604_1 i UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT CORDIS CORPORATION v. BOSTON SCIENTIFIC CORP. 2012-1647 CERTIFICATE OF INTEREST Counsel for Defendants-Appellees Boston Scientific Corporation and Boston Scientific Scimed, Inc. certifies the following: 1. The full name of every party or amicus represented by me is: Boston Scientific Corporation Boston Scientific Scimed, Inc. 2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is: Same. 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are: Boston Scientific Scimed, Inc. is a wholly-owned subsidiary of Boston Scientific Corporation. No publicly held corporation owns more than 10% of the stock of Boston Scientific Corporation. 4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court are: Matthew M. Wolf Edward Han John E. Nilsson Sara Zogg Seth I. Heller ARNOLD & PORTER LLP 555 Twelfth Street, N.W. Washington, DC 20004 Case: 12-1647 Document: 25 Page: 2 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 0 /28/17 Page 3 of 78 PageID: 1927 ii Karen L. Pascale Pilar G. Kraman YOUNG, CONAWAY, STARGATT & TAYLOR LLP Rodney Square 1000 North King Street Wilmington, DE 19801 Dated: January 16, 2013 /s/ Matthew M. Wolf Matthew M. Wolf ARNOLD & PORTER LLP 555 Twelfth Street, N.W. Washington, DC 20004 Telephone: (202) 942-5000 Facsimile: (202) 942-5999 Counsel for Defendants-Appellees Boston Scientific Corporation and Boston Scientific Scimed, Inc. Case: 12-1647 Document: 25 Page: 3 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 4 of 78 PageID: 1928 iii TABLE OF CONTENTS CONFIDENTIAL MATERIAL OMITTED Pursuant to Federal Circuit Rule 28(d)(1)(B), Appellees have prepared a public version of their brief in which they have redacted certain confidential information. Material omitted on page 10 quotes a confidential agreement between Appellees and a third party; material omitted on page 42 n. 5 describes terms of a license agreement between Appellant and a third party that Appellant designated Confidential in its Blue Brief. STATEMENT OF RELATED CASES ..................................................................... x STATEMENT OF THE ISSUES............................................................................... 1 STATEMENT OF THE CASE .................................................................................. 2 INTRODUCTION ..................................................................................................... 4 STATEMENT OF FACTS ........................................................................................ 8 I. TECHNOLOGICAL BACKGROUND .......................................................... 8 II. THE ORIGINAL FISCHELL PATENTS ....................................................... 8 III. ABBOTT‘S PURCHASE OF ACS AND ITS LICENSE AGREEMENT WITH CORDIS ................................................................... 10 IV. THE DISTRICT COURT PROCEEDINGS IN FISCHELL I ...................... 12 V. THE ASSERTED FISCHELL PATENTS AND THE ONSET OF THE CURRENT LITIGATION .................................................................... 15 VI. THE APPELLATE PROCEEDINGS IN FISCHELL I ................................ 18 VII. CORDIS‘S REVISED INFRINGEMENT THEORIES IN THIS LITIGATION ................................................................................................ 20 VIII. THE DISTRICT COURT‘S SUMMARY JUDGMENT RULINGS ........... 22 SUMMARY OF THE ARGUMENT ...................................................................... 25 ARGUMENT ........................................................................................................... 29 Case: 12-1647 Document: 25 Page: 4 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 5 of 78 PageID: 1929 iv I. THE DISTRICT COURT DID NOT ERR IN GRANTING SUMMARY JUDGMENT ON THE GROUND THAT ABBOTT‘S SALE OF PROMUS STENTS TO BSC WAS AUTHORIZED .................. 29 A. Cordis‘s Construction Of § 10.4 Of The License Agreement Is Unreasonable ....................................................................................... 30 B. The District Court‘s Construction Of § 10.4 Of The License Agreement Is Reasonable .................................................................... 33 C. There Is No Ambiguity In The License Agreement Justifying Resort To Extrinsic Evidence .............................................................. 39 II. THE DISTRICT COURT PROPERLY ENTERED SUMMARY JUDGMENT THAT PROMUS DOES NOT MEET THE ―UNDULATING‖ LIMITATIONS .............................................................. 42 A. This Court‘s Opinion In Fischell I Confirmed The District Court‘s Construction Of ―Undulating‖ And The District Court‘s Application Of That Construction ....................................................... 43 B. The District Court Properly Looked To Fischell I In Applying Its Unchallenged Construction To Promus ......................................... 48 C. Cordis Cannot Manufacture A Factual Dispute To Avoid Summary Judgment ............................................................................. 52 III. THE DISTRICT COURT PROPERLY CONSTRUED ―CIRCUMFERENTIALLY EXTENDING TURN BACK PORTION‖ ...... 53 A. There Is No Evidence That ―Circumferentially Extending Turn Back Portion‖ Would Have Any ―Plain Meaning‖ In The Art ........... 54 B. The Specification Provides No Support For Cordis‘s Construction ........................................................................................ 55 C. Cordis‘s Construction Is Foreclosed By The Prosecution History ................................................................................................. 57 D. The District Court Did Not Conflate Invalidity And Claim Construction ........................................................................................ 60 CONCLUSION ........................................................................................................ 63 Case: 12-1647 Document: 25 Page: 5 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 6 of 78 PageID: 1930 v TABLE OF AUTHORITIES CASES 13 North Enterprises, Inc. v. Bruner, Civ. A. 1179-K, 1992 WL 187630 (Del. Ch. July 8, 1992) ..........................39 AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234 (Fed. Cir. 2003) .....................................................................62 Amadeus Global Travel Distribution, S.A. v. Orbitz, LLC, 302 F. Supp. 2d 329 (D. Del. 2004) ....................................................... 34, 35 Anascape, Ltd. v. Nintendo of America, Inc., 601 F.3d 1333 (Fed. Cir. 2010) .............................................................. 62, 63 Becton, Dickinson & Co. v. TYCO Healthcare Group, 616 F.3d 1249 (Fed. Cir. 2010) .....................................................................60 Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294 (Fed. Cir. 2003) .....................................................................54 Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347 (Fed. Cir. 2011) ............................................................. passim Highlands Insurance Group, Inc. v. Halliburton Co., No. 17971, 2001 WL 287485 (Del. Ch. Mar. 21, 2001) ...............................41 Honeywell International Inc. v. ITT Industries, Inc., 452 F.3d 1312 (Fed. Cir. 2006) .....................................................................56 ICU Medical, Inc. v. Alaris Medical Systems, 558 F.3d 1368 (Fed. Cir. 2009) .............................................................. 58, 59 In re Asian Yard Partners, Nos. 95-333-PJW & 95-334-PJW, 1995 Bankr. LEXIS 2199, 1995 WL 1781675 (Bankr. D. Del. Sept. 18, 1995) ...............................................35 Instrument Indusustries Trust v. Danaher Corp., No. 03-3960 BLS, 2005 Mass. Super. LEXIS 575 (Mass. Super. Nov. 28, 2005).................. 31, 32, 37 Case: 12-1647 Document: 25 Page: 6 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 7 of 78 PageID: 1931 vi Interim Healthcare, Inc. v. Spherion Corp., 884 A.2d 513 (Del. Super. Ct. 2005) .............................................................41 K-Tec v. Vita-Mix, 696 F.3d 1364 (Fed. Cir. 2012) .............................................................. 52, 53 Leaf Financial Corp. v. ACS Services, Inc., No. 07C-02-003-MJB, 2010 WL 1740884 (Del. Super. Ct. Apr. 30, 2010) ..............................................................................................................41 Lucent Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir. 2008) .....................................................................60 Matulich v. Aegis Commc’ns Grp., Inc., Civ. A. 2601-CC, 2007 WL 1662667 (Del. Ch. May 31, 2007), aff’d, 942 A.2d 596 (Del. 2008) ..............................................................................39 Metabolit Laboratories, Inc. v. Laboratory Corp. of America, 370 F.3d 1354 (Fed. Cir. 2004) .....................................................................61 Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340 (Fed. Cir. 2004) .....................................................................57 Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473 (Fed. Cir. 1998) .....................................................................58 Rhone-Poulenc Basic Chemicals Co. v. American Motorists Insurance Co., 616 A.2d 1192 (Del. 1992) ............................................................................40 Springs Window Fashions L.P. v. Novo Industries, L.P., 323 F.3d 989 (Fed. Cir. 2003). ......................................................................60 Union Oil Co. of California v. Mobil Pipeline Co., Civ. A. 19395-N, 2006 WL 3770834 (Del. Ch. Dec. 15, 2006) ...................32 United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942).......................................................................................61 United Rentals, Inc. v. RAM Holdings, Inc., 937 A.2d 810 (Del. Ch. 2007) .......................................................................40 Case: 12-1647 Document: 25 Page: 7 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 8 of 78 PageID: 1932 vii STATUTES 8 Del. C. § 251 .................................................................................................. 29, 39 8 Del. C. § 251(a) .....................................................................................................38 8 Del. C. § 252 .........................................................................................................39 8 Del. C. § 252(a) .....................................................................................................38 8 Del. C. § 253 .........................................................................................................39 8 Del. C. § 254 .........................................................................................................39 8 Del. C. § 255 .........................................................................................................39 8 Del. C. § 256 .........................................................................................................39 8 Del. C. § 257 .........................................................................................................39 8 Del. C. § 258 .........................................................................................................39 8 Del. C. § 259 .........................................................................................................39 8 Del. C. § 260 .........................................................................................................39 8 Del. C. § 261 .........................................................................................................39 8 Del. C. § 263 .........................................................................................................39 8 Del. C. § 264 .........................................................................................................39 8 Del. C. § 267 .........................................................................................................39 8 Del. C. Chapter. 1, Subchapter IX ........................................................................38 Case: 12-1647 Document: 25 Page: 8 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 9 of 78 PageID: 1933 viii ABBREVIATIONS BSC Defendants-Appellees Boston Scientific Corporation and Boston Scientific Scimed, Inc., collectively Cordis Plaintiff-Appellant Cordis Corporation ‗604 patent U.S. Patent No. 6,086,604 ‗817 patent U.S. Patent No. 6,547,817 ‗240 patent U.S. Patent No. 6,716,240 Asserted Patents The ‗604 Patent, ‗817 Patent, and ‗240 Patent Fischell Patents The ‗312, ‗370, ‗604, ‗817 and ‗240 Patents, collectively J&J Johnson & Johnson, the parent company of Cordis Abbott Abbott Laboratories and Abbott Cardiovascular Systems, Inc., collectively Promus BSC‘s PROMUS ® Everolimus-Eluting Coronary Stent System Xience Abbott‘s XIENCE V ® Everolimus-Eluting Coronary Stent System NIR BSC‘s NIR ® Stent System Guidant Developer of the original technology for Promus and Xience, whose interventional cardiology business was purchased by Abbott (with BSC merging with the balance of the company) PTO United States Patent and Trademark Office Case: 12-1647 Document: 25 Page: 9 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG Document 96-5 Filed 02/28/17 Page 10 of 78 PageID: 1934 ix Fischell I The proceedings at issue in Cordis Corp. v. Boston Scientific Corp., No. 98-197 (D. Del.), Cordis Corp. v. Boston Scientific Corp., 188 Fed. Appx. 984 (Fed. Cir. 2006), and Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347 (Fed. Cir. 2011) Blue Br. Opening Brief of Plaintiff-Appellant Cordis Corporation (filed November 6, 2012) A______ Page in Joint Appendix A____(x:yy-zz) Page in Joint Appendix citing patent at column x, lines yy-zz NOTE: All emphasis in this brief has been added unless otherwise noted. Case: 12-1647 Document: 25 Page: 10 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 11 of 78 PageID: 1935 x STATEMENT OF RELATED CASES No appeal from this civil action was previously before this or any other appellate court. In this case, Cordis accused BSC‘s Promus stent of infringing certain claims of the ‗604 patent, the ‗817 patent and the ‗240 patent. In prior proceedings reflected in Cordis Corp. v. Boston Scientific Corp., No. 98-197 (D. Del.), Cordis Corp. v. Boston Scientific Corp., 188 Fed. Appx. 984 (Fed. Cir. 2006), and Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347 (Fed. Cir. 2011) (collectively, Fischell I), Cordis asserted two predecessor patents—U.S. Patent No. 5,643,312 (―the ‗312 patent‖) and U.S. Patent No. 5,879,370 (―the ‗370 patent‖)— against BSC‘s NIR stent. Certain claim constructions in Fischell I were applied by the district court in this litigation. Those claim constructions were also applied by this Court in Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347 (Fed. Cir. 2011) (―Fischell I‖), having been challenged by neither party on appeal. Those claim constructions were also unchallenged before the district court in these proceedings. Counsel for BSC is not aware of any other cases pending in this or any other court that will directly affect or be directly affected by the Court‘s decision in this appeal. Case: 12-1647 Document: 25 Page: 11 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 12 of 78 PageID: 1936 1 STATEMENT OF THE ISSUES 1. Whether the district court correctly applied Delaware law in interpreting the License Agreement between Cordis and Abbott to rule that Abbott‘s manufacture and sales to BSC of the Promus stent are authorized, and therefore, that BSC‘s subsequent sales of Promus are non-infringing and Cordis‘s infringement claims are exhausted as a matter of law. 2. Whether the district court properly applied its unchallenged construction of ―undulating‖ in the asserted claims of the ‗604 patent and ‗240 patent in ruling that BSC‘s Promus stent, like BSC‘s NIR stent in Fischell I, does not infringe as a matter of law. 3. Whether the phrase ―circumferentially extending turn back portion‖ in the asserted claims of the ‗817 Patent was properly construed to share the same meaning as ―undulating‖ in the absence of any evidence of ordinary meaning to one of skill in the art or any separate disclosure in the specification of a ―circumferentially extending turn back portion‖ (as opposed to ―undulating‖), and in light of the inventors‘ representations to the Patent Office during the prosecution of the original Fischell Patents. Case: 12-1647 Document: 25 Page: 12 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 13 of 78 PageID: 1937 2 STATEMENT OF THE CASE Cordis filed the complaint in this action on January 15, 2010. In it, Cordis accused BSC‘s Promus stent of infringing unspecified claims of the ‗604 patent, the ‗817 patent and the ‗240 patent. On October 19, 2011, Cordis narrowed the asserted claims to claim 1 of the ‗604 patent, claims 1, 3, 6, 9, 11, 13 and 14 of the ‗817 patent, and claims 19, 21, 25, 26, 27, 31, 32, 34, 36, and 58-64 of the ‗240 patent (―the asserted claims‖). In the period between October 27, 2011 and December 29, 2011, the parties engaged in claim construction briefing. On March 2, 2012, BSC moved for summary judgment on the grounds that: (1) Promus does not infringe the asserted claims in light of the district court‘s unchallenged construction of ―undulating‖; (2) to the extent that the ―circumferentially extending turn back portion‖ limitations of the asserted claims of the ‗817 patent are interpreted more broadly, those claims are invalid in view of intervening prior art; and (3) regardless of whether the asserted claims are literally infringed or invalid, BSC‘s sales are not infringing because Abbott‘s manufacture and sale to BSC of Promus are authorized by the 2001 License Agreement between Abbott and Cordis. Claim construction issues and summary judgment motions were heard concurrently on May 11, 2012. On June 19, 2012, the district court issued a memorandum opinion construing the disputed claim terms and granting BSC‘s Case: 12-1647 Document: 25 Page: 13 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 14 of 78 PageID: 1938 3 motion for summary judgment of non-infringement and its motion for summary judgment on grounds of authorized sale. Because the district court construed ―circumferentially extending turn back portion‖ to share the same meaning as ―undulating,‖ the district court did not address BSC‘s motion for summary judgment of invalidity on the merits, denying it on the ground that, under the district court‘s construction, the ―circumferentially extending turn back portion‖ limitation contained no new matter and was thus entitled to a February 25, 1994 priority date. The district court entered final judgment on August 16, 2012. Case: 12-1647 Document: 25 Page: 14 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 15 of 78 PageID: 1939 4 INTRODUCTION This Court may resolve this appeal entirely on the basis of the 2001 License Agreement between Cordis and Abbott, Promus‘s manufacturer. Under that agreement, Abbott and its affiliates possess a ―worldwide, non-exclusive right and license … under the Patent Rights to make, have made, use, offer for sale, sell and import Products[,]‖ including ―[a]ny product the manufacture, use sale, offer for sale or importation of which, but for the license granted hereunder, would infringe one or more Valid Claims of a patent within Patent Rights….‖ A3902-03. There is no dispute that the patents to which Abbott obtained ―Patent Rights‖ included both the original Fischell patents (at issue in Fischell I) and the Fischell patents asserted in the present litigation. A66; A75; A3930. Because BSC purchases each Promus stent from Abbott, any infringement claim against it is foreclosed by the doctrines of patent exhaustion and authorized sale. Cordis‘s argument to the contrary turns on its unreasonably broad reading of a particular provision of § 10.4 of the License Agreement that precludes its application in the event of a ―merger‖ or ―consolidation‖ with a ―Major Competitor.‖ Although Cordis admits that Abbott‘s purchase of Guidant‘s cardiology business in 2006 was not a ―merger‖ or ―consolidation,‖ Cordis argues that the transaction nevertheless falls within the scope of § 10.4. The unambiguous terms of the License Agreement itself preclude this argument. There is no dispute Case: 12-1647 Document: 25 Page: 15 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 16 of 78 PageID: 1940 5 that the License Agreement contains a choice-of-law provision expressly providing that it is to be governed by Delaware law and that, under Delaware law, Abbott‘s purchase of the Guidant cardiology business (which continues to exist today as a separate entity) was not a ―merger‖ or ―consolidation.‖ The district court properly rejected Cordis‘s attempts to avoid the effect of these provisions and its efforts to sew ambiguity where there is none. The same arguments should be rejected on appeal. Even if Promus‘s manufacturer did not possess a license to the asserted patents, Promus still would not infringe. Two of the three Asserted Patents require the presence of ―undulating‖ ―longitudinals,‖ ―longitudinal struts‖ and/or ―connecting segments.‖ The district court originally construed the term ―undulating‖ in Fischell I to mean ―rising and falling in waves,‖ thus ―having at least a crest and a trough.‖ Applying that construction in Fischell I, the district court concluded that BSC‘s NIR stent lacked ―undulating longitudinals‖ because its ―U-Loops‖ merely leveled out without rising and falling in waves, and this Court upheld that conclusion on appeal. Applying the same construction here, the district court concluded that Promus‘s U-shaped connectors did not infringe for the very same reason. On appeal, Cordis argues (just as it did in Fischell I) that the district court misunderstood and misapplied its own construction of ―undulating.‖ According to Case: 12-1647 Document: 25 Page: 16 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 17 of 78 PageID: 1941 6 Cordis, despite the fact that the district court‘s construction was unchallenged in Fischell I, this Court took it upon itself to revise the construction so that any connector with two curves separated by a point of inflection would be ―undulating.‖ This argument is inconsistent with the district court‘s construction and this Court‘s application of that construction in Fischell I. Realizing relatively early in the Fischell I litigation that the district court‘s construction of ―undulating‖ doomed any claims of infringement on the part of stents with U-shaped connectors such as NIR (and, later, Promus), Cordis amended the claims of the third Asserted Patent (the ‗817 patent) to substitute the phrase ―circumferentially extending turn back portion‖ for ―undulating.‖ According to Cordis, regardless of whether an ―undulating‖ connector must ―rise and fall in waves‖ and have both a ―crest and a trough,‖ a connector with a ―circumferentially extending turn back portion‖ may cover a connector with only a single, defined curve. Even now, Cordis can point to no support for this construction. As the district court recognized, there is no record evidence that ―circumferentially extending turn back portion‖ had an ordinary meaning in the relevant art in 1994. Likewise, the term never appears in the specification. Lacking any other guidance as to the proper meaning of the term, the district court construed it in light of the only non-linear connector disclosed in the Fischell Patents—the ―undulating longitudinal‖ of Figure 8 as described in the supporting description. Not only was Case: 12-1647 Document: 25 Page: 17 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 18 of 78 PageID: 1942 7 this construction consistent with intrinsic evidence, it was also consistent with the prosecution history: as this Court already explained in Fischell I, the inventors successfully argued that prior art stents with defined curves in their connectors ―lacked the ‗undulating shape or contour‘ required by the claims of their own invention.‖ Fischell I, 658 F.3d at 1356-57. For all of these reasons, which are explained in more detail below, the district court‘s summary judgment rulings and claim constructions were correct and should be upheld. Case: 12-1647 Document: 25 Page: 18 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 19 of 78 PageID: 1943 8 STATEMENT OF FACTS I. TECHNOLOGICAL BACKGROUND The Fischell Patents concern a particular structure and geometry for a balloon-expandable stent. This Court revisited the basics of balloon-expandable stent technology in Fischell I: In balloon angioplasty, an inflated balloon crushes built-up plaque against the arterial wall to improve blood flow. The balloon is withdrawn at the end of the procedure, however, which allows the artery to close again over time. A stent of the sort disclosed in the patents at issue in this case is mounted on an angioplasty balloon and is forced to expand against the arterial walls when the balloon is inflated. When the balloon is deflated and withdrawn, the stent retains its shape and remains in the artery to keep it open. Fischell I, 658 F.3d at 1350-51 (quoting Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1354–55 (Fed. Cir. 2003)). There are, to date, tens of thousands of issued stent patents, and this particular litigation represents just one of the more recent ―installment[s] … in an ongoing and epically expensive litigation saga known as the ‗Stent Wars.‘‖ Id. at 1354 n.4. II. THE ORIGINAL FISCHELL PATENTS The inventors of the Asserted Patents are Robert Fischell, David Fischell and Tim Fischell. The Asserted Patents issued from continuation applications relating back to an original application filed on February 25, 1994 (U.S. Patent Application No. 08/202,128). See, e.g., A98. The first issued patent in the chain was the ‗312 patent and the second was the ‗370 patent. Id. Those two patents Case: 12-1647 Document: 25 Page: 19 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 20 of 78 PageID: 1944 9 share a common specification. Its Summary Of The Invention describes the invention as an ―expandable stent that can be used in an artery or any other vessel of the human body which, when expanded, forms a multiplicity of generally circular rings whose closed structure optimizes hoop strength so as to minimize elastic recoil of the vessel into which the stent is inserted.‖ A104 (1:44-49). It further states that, initially, these rings are ―in the form of folded ellipses or ovals which can be formed to a small diameter for percutaneous insertion by means of a stent delivery catheter.‖ A104 (1:50-52). In passing, the Summary Of The Invention mentions that these ovals ―are joined to each other by either a straight or undulating shaped wires which are called ‗longitudinals.‘‖ A104 (1:53-54). Virtually all of the written description that follows in the specification is devoted to the formation and deployment of the inventors‘ ―generally circular rings.‖ Three brief sentences describe ―an alternative embodiment of a stent 10 that has two undulating longitudinals.‖ A105 (3:49-50). Referring to Figure 8 (shown below), this portion of the description notes that ―the left side longitudinal 14L (shown as dotted lines) and the right side longitudinal 14R are each undulating shaped longitudinals‖: Case: 12-1647 Document: 25 Page: 20 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 0 /28/17 Page 21 of 78 PageID: 1945 10 Figure 8 Of The Fischell Patents Showing Two Undulating Longitudinals A103. The specification hazards that ―[s]uch a stent would bend more easily during insertion into a vessel and would be more readily adaptable for placement in curved vessels such as some coronary arteries.‖ A105 (3:55-58). This is the sum total of the Fischell Patents‘ description of ―undulating‖ longitudinals.1 III. ABBOTT’S PURCHASE OF ACS AND ITS LICENSE AGREEMENT WITH CORDIS Abbott made the accused Promus stents and sold them to BSC, for resale by BSC, pursuant to the terms set forth in a January 2006 Transaction Agreement. A3945 (Transaction Agreement § 5.07 [ Redacted ]); A3950 [ Redacted ]). Abbott obtained 1 Presumably, these brief fragments are the portion of the specification to which Cordis refers when it says ―The Fischells‘ application described a way to make stents more flexible, making it easier to deliver and place stents in highly curved vessels such as coronary arteries.‖ (Blue Br. at 8.) Case: 12-1647 Document: 25 Page: 21 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 0 /28/17 Page 22 of 78 PageID: 1946 11 the rights to the technology embodied in Promus (which Abbott itself sells as Xience) when it purchased Guidant‘s cardiology business in 2006. This business included Guidant‘s subsidiary, Advanced Cardiovascular Systems, Inc., which was subsequently renamed Abbott Cardiovascular Inc. (―ACS‖) and which remains a separate entity incorporated under the laws of the State of California (Abbott is incorporated under the laws of the State of Illinois). A3935-39; A3941; A3855. At the time of Abbott‘s purchase of ACS, Abbott already possessed a license to the Fischell Patents. Specifically, in June 2001, Cordis and Abbott entered into a License Agreement that granted Abbott the right to make and sell products covered by all patents in the Fischell patent family (including the Asserted Patents). (See Blue Br. at 16.) The License Agreement provided: Cordis hereby grants Abbott and its Affiliates … a worldwide, non- exclusive right and license … under the Patent Rights to make, have made, use, offer for sale, sell and import Products. A3903 (License Agreement Art. II). The agreement defined a ―Product‖ for purposes of this provision as: Any product the manufacture, use sale, offer for sale or importation of which, but for the license granted hereunder, would infringe one or more Valid Claims of a patent within Patent Rights…. A3902-03 (License Agreement § 1.17). The patents to which Abbott obtained ―Patent Rights‖ were defined as: … the patents listed in schedule 1.14, and all substitutions, extensions, reissues, renewals, reexaminations, divisions, continuations or Case: 12-1647 Document: 25 Page: 22 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 0 /28/17 Page 23 of 78 PageID: 1947 12 continuing applications thereof, and all foreign counterparts of the foregoing. A3902 (License Agreement § 1.14). Thus, the license extended to the asserted Fischell ‗604 patent, which is specifically listed on Schedule 1.14, A3920, as well as the ‗817 and ‗240 patents, which are continuations thereof. A66; A75; see A3930 (testimony of Cordis‘s corporate representative that ―There are licenses granted to certain patent families: Palmaz, Fischell, Pinchuk. Each of the licenses granted under those patent families gives Abbott the right to practice those patents, in other words, make products that practice those patents‖). This License Agreement was in effect throughout the period of BSC‘s alleged infringement and remains in effect today. As Cordis‘s corporate representative testified: Q. … [A]s far as you know, sitting here today, this agreement has not been terminated, correct? A. As far as I know, no. A3932; see id. (license not expired; agreement not terminated for cause). IV. THE DISTRICT COURT PROCEEDINGS IN FISCHELL I In 1997, Cordis filed a patent infringement action against BSC in the District of Delaware in which it accused BSC‘s NIR stent of infringing the Fischell ‗312 and ‗370 patents. The NIR stent employed U-shaped elements to connect its C- shaped expansion elements, as shown below: Case: 12-1647 Document: 25 Page: 23 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 0 /28/17 Page 24 of 78 PageID: 1948 13 The NIR Stent With U-Loops Like practically all of the claims of the Asserted Patents, every asserted claim of the ‗312 patent and ‗370 patent required an ―undulating‖ longitudinal. During the Markman phase of Fischell I, Cordis argued that connecting longitudinals required only a crest or a trough, not both, to be ―undulating.‖ BSC took the position that an ―undulating‖ longitudinal necessarily possessed both a crest and a trough. A811 (Cordis Opening Br. in Fischell I). At that juncture, Cordis fully realized the implications of BSC‘s construction, pointing out that, ―[u]nder BSC‘s construction, [the undulating limitation] could not be satisfied by a ‘U shaped curve’‖ unless that U-shaped curve were accompanied by a second ―inverted U-shaped curve, to form a crest with its associated trough.‖ (A5426 (from Cordis‘s Claim Construction Reply Br. in Fischell I).) The district court, however, agreed with BSC, concluding that ―undulating‖ meant ―rising and falling in waves, thus having at least a crest and a trough.‖ A772 (Mar. 28, 2002 Memorandum Opinion). At trial, Cordis and its expert, Dr. Nigel Buller, advanced a ―creative‖ application of the district court‘s construction. A773. As shown in the figure Case: 12-1647 Document: 25 Page: 24 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 0 /28/17 Page 25 of 78 PageID: 1949 14 below, they argued to the jury that ―the ‗U‘ shaped member of the NIR stent represent[-ed] one full cycle of a sine wave, which include[-ed] one crest (the combined two top points of the ‗U‘) and one trough (the ‗U‘ curve itself).‖ Id. Cordis’s Theory Of Infringement At Trial In Fischell I Swayed by this argument, the jury found the claims to be literally infringed, though not infringed under the reverse doctrine of equivalents. After trial, however, the district court overturned the jury‘s verdict of literal infringement. The district court pointed out that the original claim construction dispute between the parties centered on ―whether ‗undulating‘ required both a crest and a trough,‖ as argued by BSC, ―as opposed to a crest or a trough[,]‖ as argued unsuccessfully by Cordis. A772 n.22. The district court further explained that it was fundamental that an undulation possessing a ―crest‖ and ―trough‖ would have at least two ―arcing curves,‖ ―not just points at the top or bottom of a curve.‖ A772. The district court thus granted BSC‘s motion for judgment of non- Case: 12-1647 Document: 25 Page: 25 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 0 /28/17 Page 26 of 78 PageID: 1950 15 infringement as a matter of law. A774. Cordis subsequently appealed this determination. V. THE ASSERTED FISCHELL PATENTS AND THE ONSET OF THE CURRENT LITIGATION This appeal centers on three more junior members of the Fischell patent family—the ‗604 patent, the ‗817 patent, and the ‗240 patent.2 Just as the term ―undulating‖ (or ―undulation‖) appeared in every claim of the ‗312 patent and the ‗370 patent, it also appears in every asserted claim of the ‗604 and ‗240 patents. Similarly, the original claims of the application that issued as the ‗817 patent described the claimed longitudinally extending connector as having ―undulating sections.‖ A2569-2572. In October of 2002, however, months after the district court‘s JMOL ruling in Fischell I in which it explained the requirements of an ―undulating‖ longitudinal, Cordis cancelled the original claims in that application and submitted new ones that replaced the phrase ―undulating section‖ with a new 2 The ‗817 patent was filed on June 16, 2000, and issued on April 15, 2003. It is ostensibly a continuation of the ‗604 patent, which was filed on March 5, 1999, and issued on July 11, 2000. The ‗240 patent was filed on January 19, 2003 and also purports to be a continuation of the ‗604 patent. The ‗604 patent purports to be a continuation of Application No. 08/864,221, which was filed on May 28, 1997, and issued as the ‗370 patent, which in turn claims to be a continuation of Application No. 08/202,128, which was filed on February 25, 1994, and issued as the ‗312 patent. As Cordis acknowledges, ―[a]ll of the patents in the family share essentially the same specification, including Figure 8.‖ (Blue Br. at 9.) Case: 12-1647 Document: 25 Page: 26 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 0 /28/17 Page 27 of 78 PageID: 1951 16 phrase, one foreign to the Fischell patents‘ specification—―circumferentially extending turn back portion.‖ Compare A2569-2572 with A3086-3087. In January of 2010, months before Cordis was to file its opening brief in the appeal in Fischell I, it initiated this action against BSC, accusing BSC‘s Promus stent of infringing the ‗604 patent, the ‗817 patent, and the ‗240 patent. A90-132. The geometry of the Promus stent is shown below: The Architecture Of The Promus Stent A13; A5440. As it had during the district court proceedings in Fischell I, Cordis insisted that each U-shaped connector in fact contained one ―crest‖ and two ―troughs‖ (or two ―crests‖ and one ―trough‖ depending on the stent‘s orientation). In the Figure below, which is drawn from Cordis‘s initial expert‘s report, the supposed ―crest‖ is the point at the ―top‖ of the yellowed section; the two supposed ―troughs‖ are the points at which the U-shape levels into the straight portions of the connector: Case: 12-1647 Document: 25 Page: 27 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 0 /28/17 Page 28 of 78 PageID: 1952 17 Cordis’s Infringement Theory Prior To The Federal Circuit’s Decision in Fischell I A786. To support this theory of infringement, Cordis again chose to rely on Dr. Nigel Buller. At his deposition, Dr. Buller attested to the breadth of Cordis‘s version of the district court‘s ―undulating‖ construction. For instance, he claimed the geometry below, which has absolutely no curves at all, constituted an ―undulation‖ (with the ―crest‖ marked ―C‖ and the two ―troughs‖ marked ―T‖): One “Undulation” Under Cordis’s Infringement Position As Advanced Prior To This Court’s Analysis In Fischell I Case: 12-1647 Document: 25 Page: 28 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 0 /28/17 Page 29 of 78 PageID: 1953 18 A799. As the district court later recognized, ―[a]ccording to Buller, virtually any indentation in an otherwise-straight connector could suffice as an ‗undulation[.]‖ A13. VI. THE APPELLATE PROCEEDINGS IN FISCHELL I As the current litigation proceeded against BSC‘ Promus stent, Cordis pursued the appeal of the district court‘s JMOL ruling in Fischell I. In the appeal, Cordis did not challenge the district court‘s construction of ―undulating.‖ Rather, it argued that the district court had misunderstood and misapplied its own construction. According to Cordis, the district court was wrong in believing that its construction required ―a crest and trough‖ that form ―arcing curves.‖ See, e.g., Fischell I, 658 F.3d at 1355 (identifying issues on appeal). In the alternative, Cordis argued that—even if a crest and trough in an undulating longitudinal under the district court‘s construction were necessarily arcing curves—the jury‘s finding of literal infringement was still reasonable. In support of this argument, Cordis asserted that ―[t]he undulating sections in the NIR‘s cells form two waves, with each wave featuring ‗arcing curves‘ and a ‗change of direction.‘‖ A5492. In support of this position, Cordis submitted the diagram below (annotated to show what Cordis characterized as two ―crests‖ and one ―trough‖ in NIR‘s U-Loop): Case: 12-1647 Document: 25 Page: 29 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 0 /28/17 Page 30 of 78 PageID: 1954 19 See A5429. This Court rejected each of these arguments in turn. First, the Court rejected Cordis‘s argument that two mathematical points at the apex and base of a single wave could constitute a crest and a trough for purposes of the district court‘s construction. Fischell I, 658 F.3d at 1358. So understood, as the Court pointed out, ―every trough would necessarily include a ‗highest point‘ that would satisfy Cordis‘s definition of ‗crest.‘‖ Id. at 1356. This would ―impermissibly render superfluous the requirement for a ‗crest‘ in addition to a ‗trough.‘‖ Id. The Court also rejected Cordis‘s argument that, even under the district court‘s understanding of its own construction, it would still have been reasonable for the jury to find that NIR‘s U-Loops were ―undulating.‖ Id. at 1357. The Court emphasized that, Case: 12-1647 Document: 25 Page: 30 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 31 of 78 PageID: 1955 20 “[because] the U-loops … merely level out … they lack the change of direction required for literal infringement.‖ Id. at 1358. VII. CORDIS’S REVISED INFRINGEMENT THEORIES IN THIS LITIGATION After this Court‘s decision in Fischell I, Cordis found itself forced to revise its theory of infringement, at least with respect to the ―undulating‖ limitations of the ‗604 patent and the ‗240 patent. Cordis did not relinquish its claims of literal infringement, however. Instead, it seized upon this Court‘s comment that ―[t]he terms ‗crest‘ and ‗trough‘ … implicate changes of direction, with the curve extending beyond the point of inflection.‖ See Fischell I, 658 F.3d at 1356. Characterizing this language as ―definitional and clarifying,‖ A605, Cordis argued that this Court had effectively revised the district court‘s claim construction. According to Cordis, all that was now required for an ―undulation‖ was merely one curve separated from another by a ―point of inflection,‖ regardless of the curves‘ orientation and regardless of their relative degree of curvature. This gloss rendered the district court‘s admonition that the longitudinal must be ―rising and falling in waves‖ mere surplusage. Thus, according to Cordis and Dr. Buller, the figure below showed an ―undulation,‖ because there was a perceptible curve at the base of an inverted ―U‖ (or ―trough‖): Case: 12-1647 Document: 25 Page: 31 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 32 of 78 PageID: 1956 21 A14; A4419. As the district court noted, ―Buller opines … that a shape (such as that [above]) can be ‗undulating‘ where one can discern some degree of curvature at the base, as well as a change of direction at a ‗point of inflection‘ (through which a dotted line has been drawn)[.]‖ A14. Under this reading of the district court‘s construction, Cordis could argue that Promus‘s U-shaped connectors were ―undulating‖ merely because they did not ―level out‖ at a right angle, but rather ―leveled out‖ with some degree of curvature. Moreover, according to Cordis, even if Promus‘ connectors did level out at a right angle, those connectors would still possess a ―circumferentially extending turn back portion.‖ This is because Cordis took the position that this language from the amended claims of the ‘817 patent was broader than ―undulation,‖ and did not require a trajectory ―rising and falling in waves, having at least a crest and a trough.‖ Instead, the phrase merely denoted a portion of the stent that ―extends back in the general direction from which it came.‖ A23. Thus, a single curve descending directly into a line, as shown below, would constitute a Case: 12-1647 Document: 25 Page: 32 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 33 of 78 PageID: 1957 22 ―circumferentially extending turn back portion‖ for Cordis even though it would not constitute an ―undulation‖ under either party‘s understanding of the district court‘s construction, A4419: VIII. THE DISTRICT COURT’S SUMMARY JUDGMENT RULINGS In a combined summary judgment and Markman ruling, the district court rejected Cordis‘s arguments. Focusing on the ―undulating‖ issue, the district court noted that its construction of that term had not been challenged and thus remained unaltered. A11. It further concluded that, for the very same reasons that NIR‘s U- loops did not meet the ―undulating‖ limitations of the earlier Fischell Patents, Promus‘s U-shaped connectors could not meet the ―undulating‖ limitations of the ‗604 patent and ‗240 patent: The court agrees with BSC that [Fischell I] forecloses Cordis‘s arguments at bar that the Promus stent infringes these asserted claims. As the diagrams indicate (supra), both the NIR and Promus stents have U-shaped connecting elements that ‗merely level out,‘ rather than rising and falling in waves. A30. Case: 12-1647 Document: 25 Page: 33 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 34 of 78 PageID: 1958 23 Addressing the issue of the proper construction of ―circumferentially extending turn back portion,‖ the district court noted that it appeared nowhere in the specification or in the prosecution histories of any Fischell Patent. A24. The district court further noted the utter absence of evidence that the phrase had any meaning to one of ordinary skill in the art at the alleged date of the invention (February of 1994). A25. Stating that it lacked any other ―guidance of record as to the shape of the turn back portion,‖ the district court turned to the only structure disclosed in the specification for a non-linear connector. A26-27. The district court thus ―constru[-ed] a ‗circumferentially extending turn back portion‘ consistent with the only plausible construction supported by figure 8 of the specification: an ‗undulating portion, or a portion that rises and falls in waves.‘‖ A27. Based on this construction, the court concluded that, for the same reason that Promus did not infringe the ―undulating‖ limitations of the asserted claims of the ‗604 patent and ‗240 patent, it also did not infringe the ―circumferentially extending turn back portion‖ limitations in the asserted claims of the ‗817 patent. A30. In addition, the district court granted BSC‘s motion for summary judgment that Abbott‘s sales of Promus stents to BSC were authorized under Abbott‘s License Agreement with Cordis and that BSC‘s subsequent resale of those stents to customers was non-infringing under the doctrine of patent exhaustion. A22. Case: 12-1647 Document: 25 Page: 34 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 35 of 78 PageID: 1959 24 Citing Cordis‘s admission that ―Abbott‘s acquisition of ACS was ‗not a statutory merger or statutory consolidation meeting all the requirements of Delaware law,‘‖ A20 (citing Cordis‘s brief below, A4486-87), the court found that ―there was no ‗merger‘ or ‗consolidation‘ with ACS or any other Major Competitor under the terms of the License.‖ A22. Thus, it granted summary judgment on this basis as well: Abbott‘s rights to the Fischell patents were not extinguished, and Abbott is authorized to sell Promus stents to BSC…. Because BSC acquired products relying upon the Fischell patents from a licensed third party (Abbott), the doctrine of patent exhaustion bars Cordis from asserting its patent rights against BSC. A22. Case: 12-1647 Document: 25 Page: 35 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 36 of 78 PageID: 1960 25 SUMMARY OF THE ARGUMENT The district court was absolutely correct in granting BSC‘s motion for summary judgment that Abbott‘s sales of Promus stents to BSC were authorized under Abbott‘s License Agreement. In so ruling, the district court properly rejected Cordis‘s central argument that those sales violated a provision of the License Agreement restricting the license in the event of Abbott‘s ―merger‖ or ―consolidation‖ with a Major Competitor. Cordis contends that Abbott‘s purchase of ACS, a former subsidiary of Guidant, Inc., triggered that restriction. A20. As the district court correctly noted, however, the License Agreement is expressly governed by Delaware law. A17. Under Delaware law, because ACS and Abbott remained distinct corporate entities after the asset purchase, there was no ―merger‖ or ―consolidation.‖ A20-21. Although Cordis expressly concedes that there was no merger and consolidation between ACS and Abbott as those terms are defined under Delaware law (Blue Br. at 26), Cordis claims that Delaware‘s statutory definitions of ―merger‖ and consolidation‖ do not apply to the License Agreement because they would conflict with the parties‘ intention, which—according to Cordis—was to restrict Abbott‘s license whenever Abbott entered into any sort of combination with a ―‗Major Competitor,‘ regardless of the precise form of the transaction….‖ (Blue Br. at 56.) As explained below, there are at least three fallacies underlying Case: 12-1647 Document: 25 Page: 36 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 37 of 78 PageID: 1961 26 this argument. First, the parties themselves, both sophisticated corporations, selected the terms ―merger‖ and ―consolidation‖ and expressly provided that those terms (like the rest of the agreement) were to be governed by Delaware law. Second, Cordis‘s primary argument in support of this point—that Section 10.4 would render it a ―nullity‖—is false. Because § 10.4 would clearly be implicated in the event of an actual merger or consolidation with a ―Major Competitor‖ (such as Medtronic AVE), the district court‘s interpretation of the provision did not render it a ―nullity.‖ Third, Cordis‘s invocation of its own executives‘ testimony as to their supposed intent in negotiating the provision is inadmissible under Delaware law unless Cordis can make a threshold showing that the contract is ambiguous. The district court rightly concluded that Cordis had failed to make any such showing. For these reasons, the district court‘s decision that BSC‘s sales of Promus are authorized under Abbott‘s License Agreement with Cordis was correct and should be upheld. Like its ruling that BSC‘s sales of Promus were non-infringing under the exhaustion doctrine, the district court‘s ruling that Promus does not meet the ―undulating‖ and ―circumferentially extending turn back portion‖ limitations disposes of the entire case. The district court was also correct in concluding that, just as the NIR stent‘s ―U-Loops‖ did not ―rise and fall in waves,‖ having both a ―crest and a trough,‖ Promus‘s U-shaped connectors lacked the same features. Case: 12-1647 Document: 25 Page: 37 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 38 of 78 PageID: 1962 27 Instead, ―both the NIR and Promus stents have U-shaped connecting elements that ‗merely level out,‘ rather than rising and falling in waves.‖ A30. Cordis‘s argument that this Court revised the district court‘s construction of ―undulating‖ in Fischell I such that all that would be necessary for infringement is the presence of one curve separated from another by a ―point of inflection‖ ignores the requirement of the unchallenged claim construction that the ―undulating‖ longitudinal ―rise and fall in waves‖ and possess both ―a crest and a trough.‖ Under a proper application of the district court‘s construction, which necessarily requires orientation vis-à-vis the longitudinal axis of the stent, Promus‘s U-shaped connectors—like NIR‘s U-Loops—merely level out. They do not ―rise and fall in waves‖ so as to have both a ―crest and a trough.‖ Finally, the district court‘s construction of ―circumferentially extending turn back portion‖—the phase substituted for ―undulating‖ in the ‗817 patent after the district court‘s original construction of undulating—was also correct. Cordis now claims that this language would have been understood by one of skill in the art in 1994 to encompass a longitudinal or connector with a single curve. Contrary to Cordis‘s claims, however, there is no evidence that this belatedly coined phrase had any plain meaning to one of ordinary skill in the art in 1994. It simply does not appear in the prior art or any pertinent literature. In this vacuum, the district court rightly looked to the only disclosure of a non-linear longitudinal or connector Case: 12-1647 Document: 25 Page: 38 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 39 of 78 PageID: 1963 28 in the Fischell Patents themselves. Those patents show only an ―undulating longitudinal.‖ The district court‘s construction was also supported by the inventors‘ representations to the Patent Office. As pointed out by this Court in Fischell I, the inventors traversed the prior art by emphasizing that a prior art stent (which clearly possessed a curved connector or longitudinal) ―lacked the ‗undulating shape or contour‘ required by the claims of their own invention.‖ Fischell I, 658 F.3d at 1356-57. The Court thus concluded that Cordis‘s expansive understanding of ―undulating‖ was ―foreclosed.‖ Id. at 1357. For the same reason, its expansive construction of ―circumferentially extending turn back portion‖ is also improper and should be rejected. Case: 12-1647 Document: 25 Page: 39 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 40 of 78 PageID: 1964 29 ARGUMENT I. THE DISTRICT COURT DID NOT ERR IN GRANTING SUMMARY JUDGMENT ON THE GROUND THAT ABBOTT’S SALE OF PROMUS STENTS TO BSC WAS AUTHORIZED In ruling that Abbott‘s sale of Promus stents to BSC was authorized, and that BSC‘s subsequent sale of those products was therefore non-infringing under the doctrine of patent exhaustion, the district court‘s reasoning was sound and fully supported by the record. The 2001 License Agreement between Cordis and Abbott expressly authorizes ―Abbott and its Affiliates‖ to ―make, have made, use, offer for sale, sell and import Products‖ that practice, inter alia, the claims of the Fischell patents, including the patents-in-suit. A3898; A3902-03; A3920. The only relevant limitation on that license is ―in the event of the merger or consolidation of Abbott with a Major Competitor….‖ A3914 (License Agreement § 10.4). Because the License Agreement does not define ―merger‖ or ―consolidation‖ but is to be ―construed, interpreted and governed by the laws of the State of Delaware,‖ A3916 (License Agreement § 10.8), the district court appropriately looked to Delaware law to determine whether a ―merger or consolidation‖ had occurred. As Cordis acknowledges, ―[u]nder the Delaware statute, a ‗merger‘ occurs when ‗[a]ny 2 or more corporations … merge into a single corporation,‘ and a ‗consolidation‘ occurs when ‗[a]ny 2 or more corporations … consolidate into a new corporation.‘ 8 Del. C. § 251.‖ (Blue Br. at 26.) As Cordis further concedes: Case: 12-1647 Document: 25 Page: 40 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 41 of 78 PageID: 1965 30 ―It was undisputed that the Abbott-Guidant combination was not a ‗merger‘ or ‗consolidation‘ within the narrow meaning of the Delaware Business Corporation Act and that Guidant‘s former Advanced Cardiovascular Systems, Inc. subsidiary was maintained as a wholly-owned subsidiary of Abbott. (A4486-87.)‖ (Blue Br. at 26.) Because there has been no ―merger‖ or ―consolidation,‖ the district court correctly concluded that Cordis had authorized Abbott‘s sale of Promus stents to BSC and that BSC‘s subsequent sale of those stents was non-infringing under the doctrine of patent exhaustion. A22. A. Cordis’s Construction Of § 10.4 Of The License Agreement Is Unreasonable Cordis‘s construction of § 10.4 of the License Agreement—i.e., that ―the exclusion in section 10.4 applies whenever Abbott combines its own business with that of a ‗Major Competitor,‘ regardless of the precise form of the transaction…‖ (Blue Br. at 56)—is unreasonable in several respects. First, Cordis‘s construction requires the Court to conclude that, in drafting this provision, the parties chose to use the terms ―merger‖ and ―consolidation‖—terms that specifically denote particular types of transactions—even though they were indifferent to the form of the transaction. Second, Cordis‘s construction of § 10.4 is not grounded in any plausible definition of the words chosen by the parties to express their agreement. While criticizing the definitions of ―merger‖ and ―consolidation‖ adopted by the district Case: 12-1647 Document: 25 Page: 41 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 42 of 78 PageID: 1966 31 court, Cordis offers no definition of its own for those crucial terms. Thus, notwithstanding Cordis‘s complaints that the district court‘s ruling ―nullified‖ and rendered ―superfluous‖ portions of the License Agreement (Blue Br. at 5, 56), it is Cordis that seeks to deprive the terms ―merger‖ and ―consolidation‖ of any meaning. As the district court correctly observed, Cordis‘s construction would ―negate the ‗[i]n the event of the merger or consolidation of Abbott‘ language defining the precise circumstances under which the License could be voided.‖ A21-22. Before the district court, Cordis initially relied on dictionary definitions to supports its argument. In response, BSC showed that, even under those definitions, there had been no merger or consolidation of Abbott with any Major Competitor. A4863-64. For example, Black‘s Law Dictionary defines ―merger‖ as ―[t]he fusion or absorption of one thing … into another‖ where ―the less important ceases to have an independent existence,‖ A4565, and ―consolidate‖ as ―unite into one mass or body.‖ A4563. Because ACS continues to have an independent existence as a separate, wholly-owned subsidiary of Abbott, there has been no merger or consolidation even under these definitions. Cordis‘s reliance on Instrument Indus. Trust v. Danaher Corp., No. 03-3960 BLS, 2005 Mass. Super. LEXIS 575 (Mass. Super. Nov. 28, 2005), is therefore misplaced. The transaction in that case could be viewed as a ―merger‖ or ―consolidation‖ as defined by Case: 12-1647 Document: 25 Page: 42 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 43 of 78 PageID: 1967 32 Black‘s Law Dictionary, id. at *10, because the acquired business ―never became a separate corporate entity‖ and was ―operated together‖ with a subsidiary of the buyer. Id. at *7-8. Third, Cordis‘s construction of § 10.4 is unreasonable because, if the parties to the License Agreement had intended that provision to operate as Cordis now contends, they would and easily could have chosen other language clearly expressing such intent. See, e.g., Union Oil Co. of Cal. v. Mobil Pipeline Co., Civ. A. 19395-N, 2006 WL 3770834, at *12 (Del. Ch. Dec. 15, 2006) (―Delaware law will not create contract rights and obligations that were not part of the original bargain, especially where, as here, the contract could easily have been drafted to expressly provide for them‖). For example, instead of the phrase ―in the event of the merger or consolidation of Abbott with a Major Competitor …,‖ the parties could simply have used the language that Cordis now advocates in its Brief: ―whenever Abbott combines its own business with that of a Major Competitor, regardless of the precise form of the transaction .…‖ Compare A3914 (License Agreement § 10.4) with Blue Br. at 56. Alternatively, the parties could have used the term ―Affiliate,‖ which was already defined in the License Agreement as ―any entity that controls, is controlled by, or is under common control with‖ another entity, A3898 (License Agreement § 1.1): ―In the event that a Major Competitor becomes an Affiliate of Abbott ….‖ Or, they could simply have prohibited sales to Case: 12-1647 Document: 25 Page: 43 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 44 of 78 PageID: 1968 33 Major Competitors, including BSC, as Cordis had done in an agreement it entered into barely a year before it entered into the License Agreement with Abbott. See A4725 (―this Agreement shall not authorize the licensee to make, have made, use or sell, or otherwise dispose of, for or to any Competitor of the licensor‖). Or, as the district court noted, ―Cordis, a sophisticated commercial party, could have negotiated specific definitions of ‗merger‘ and ‗consolidation‘ to be included with other defined terms in Article I of the license, or the inclusion of additional circumstances such as the purchase of assets from a Major Competitor.‖ A22. The parties to the License Agreement chose none of these options. In sum, Cordis‘s construction of § 10.4 of the License Agreement—which disregards the parties‘ specification of particular forms of transaction, is not grounded in any definition of ―merger‖ or ―consolidation,‖ and would have been expressed using other language if that construction reflected the parties‘ intent—is unreasonable and should be rejected. B. The District Court’s Construction Of § 10.4 Of The License Agreement Is Reasonable Because the License Agreement provides no definition of ―merger‖ or ―consolidation‖ but expressly provides that ―[t]his Agreement shall be construed, interpreted and governed by the laws of the State of Delaware,‖ A3916 (License Agreement § 10.8), the district court‘s reliance on Delaware statutory definitions was an entirely reasonable approach—indeed, the only reasonable approach—to Case: 12-1647 Document: 25 Page: 44 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 45 of 78 PageID: 1969 34 construing those terms. The court‘s reasoning recognizes that, while a licensor such as Cordis might seek to restrict the scope of the license grant, the licensee would naturally seek to negotiate the narrowest possible restrictions. To determine the outcome of that negotiation in this case, the district court properly rejected the conclusory assertions of Cordis‘s counsel and the self-serving parol evidence of its executives in favor of the unambiguous language in the parties‘ agreement. None of Cordis‘s attempts to undermine the district court‘s reasoning is supported by common sense, law, or the express language of the License Agreement. Amadeus Global Travel Distribution, S.A. v. Orbitz, LLC, 302 F. Supp. 2d 329 (D. Del. 2004) (Robinson, J.), on which Cordis principally relies (see Blue Br. at 57), is readily distinguishable. In Amadeus, the dispute turned on whether two entities were ―affiliates‖ within the meaning of a software licensing agreement which, unlike the agreement at bar, provided an express and unambiguous definition of the disputed term. Id. at 334-35 (―First, … the parties have provided an unambiguous definition of ‗affiliate‘‖). Because the express definition of ―affiliate‖—―another Person that … controls or is controlled by or is under common control with the Person specified‖—omitted any reference to ownership interests, the court in Amadeus declined to apply a statutory presumption that a 20% ownership interest constituted ―control.‖ Id. at 334-35 (citing 8 Del. Code § 203(c)). Indeed, the court distinguished In re Asian Yard Partners, Nos. 95-333- Case: 12-1647 Document: 25 Page: 45 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 46 of 78 PageID: 1970 35 PJW & 95-334-PJW, 1995 Bankr. LEXIS 2199, 1995 WL 1781675 (Bankr. D. Del. Sept. 18, 1995), in which the ―court looked to Delaware statutory law for guidance where the contract at issue did not define ‗affiliate.‘‖ Amadeus, 302 F. Supp. 2d at 335. Because the License Agreement at issue here similarly fails to define ―merger‖ or ―consolidation,‖ the district court correctly applied the reasoning of Asian Yard Partners—adopting the Delaware statutory definition of a disputed term—rather than that of Amadeus. Cordis‘s assertion that ―the parties had expressly not adopted the statutory definitions of ‗merger‘ and ‗consolidation‘‖ (Blue Br. at 5 (first emphasis added)) is demonstrably false. No provision of the License Agreement—express or otherwise—precludes reference to Delaware statutes in applying ―the laws of the State of Delaware‖ to construe or interpret that Agreement. A3916 (License Agreement § 10.8). Cordis‘s assertion that the district ―court‘s interpretation renders the express contractual definition entirely superfluous‖ (Blue Br. at 5) is also demonstrably false. There were clearly circumstances under which § 10.4 of the License Agreement could have operated to restrict the license grant—e.g., if Abbott had consummated a statutory merger or consolidation with Scimed Life Systems, Inc., Advanced Cardiovascular Systems, Inc., or Medtronic AVE, each of which was an incorporated division or business of an entity identified as a Major Competitor. Case: 12-1647 Document: 25 Page: 46 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 47 of 78 PageID: 1971 36 See A3900 (License Agreement § 1.9). Thus, the exclusion in § 10.4, as construed by the district court, is not a ―nullity‖ (see Blue Br. at 53, n.11; id. at 56); it is merely narrower than the exclusion that Cordis now wishes it had negotiated. Cordis cites no authority and identifies no provision of the License Agreement to support its premise that the parties necessarily intended the phrase ―divisions or businesses‖ to extend to unincorporated entities. (See Blue Br. at 5, 55.) The word ―unincorporated‖ does not appear in § 10.4, in the definition of ―Major Competitor,‖ or in any other relevant provision of the agreement. Indeed, the entities identified in the License Agreement as divisions or businesses of Major Competitors were all separately incorporated. A3900 (License Agreement § 1.9 (identifying Scimed Life Systems, Inc. (a subsidiary of BSC), Advanced Cardiovascular Systems, Inc. (a subsidiary of Guidant, Inc.), and Medtronic AVE (a subsidiary of Medtronic, Inc.)). Thus, contrary to Cordis‘s assertion that ―[t]he district court did not address this conflict between its interpretation and the express terms of the contract‖ (Blue Br. at 56), the district court specifically and correctly found that ―[a]pplying the Delaware definitions of ‗merger‘ and ‗consolidation‘ to the terms as used in the License does not result in any intra-conflict contradiction.‖ A21. Instrument Industries (cited in Blue Br. at 56-57), which was decided by a Massachusetts trial court under Massachusetts law, is distinguishable because the Case: 12-1647 Document: 25 Page: 47 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 48 of 78 PageID: 1972 37 contract at issue there could only have referred to an unincorporated entity. Instrument Industries involved a company‘s sale of ―most of its assets and some of its liabilities‖ pursuant to an ―Asset Purchase and Sale Agreement‖ that required the buyer to make certain payments if ―all or any portion of the Business is merged or consolidated‖ without the seller‘s consent. 2005 Mass. Super. LEXIS 575 at *1- 3. The court in Instrument Industries declined to ―apply more formal usage of the words ‗merger‘ and ‗consolidate‘ such as is used in the corporate sense‖ because ―the Agreement is not dealing with a corporation‖ but merely ―assets acquired from a corporation.‖ Id. at *10-11. Here, it is undisputed that the License Agreement specifically identified certain incorporated entities and that the exclusion in § 10.4 would have been effective to restrict the license grant in the event of certain specific transactions with those entities. Thus, the district court‘s ruling did not ―deprive[] Cordis of the benefit of the bargain to which the parties expressly agreed‖ (Blue Br. at 57); rather, it merely declined Cordis‘s invitation to impose a sweeping bargain that Cordis failed to achieve during contract negotiations and enforced the narrower bargain that the parties actually expressed in their contract. Cordis‘s observation that ―the Delaware statute on which BSC and the court relied applies only to mergers or consolidations in which at least one party is a Delaware corporation‖ (Blue Br. at 26; see id. at 52, n.11) does not affect the Case: 12-1647 Document: 25 Page: 48 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 49 of 78 PageID: 1973 38 definitions of ―merger‖ and ―consolidation‖ under Delaware law. While the Delaware legislature authorized mergers and consolidations involving entities within its jurisdiction—i.e., ―corporations existing under the laws of this State‖ or ―corporations of this State,‖ 8 Del. C. §§ 251(a), 252(a)—in order to do so, it necessarily defines the concepts of ―merger‖ and ―consolidation‖ under Delaware law. Indeed, Cordis acknowledges that ―[u]nder the Delaware statute, a ‗merger‘ occurs when ‗[a]ny 2 or more corporations … merge into a single corporation,‘ and a ‗consolidation‘ occurs when ‗[a]ny 2 or more corporations … consolidate into a new corporation‘‖ (Blue Br. at 26 (citing 8 Del. C. § 251)), regardless of the state of incorporation of the entities involved. Finally, Cordis‘s suggestion that it would be too burdensome for ―a court considering the contract [to] search through hundreds of pages of Delaware statutes to determine whether [‗merger or consolidation‘] ha[ve] somewhere been defined by the legislature‖ (Blue Br. at 57) is far-fetched, to say the least. It should come as no surprise to any court or practitioner that Delaware, perhaps the leading jurisdiction for corporate law, has statutory definitions for ―merger‖ and ―consolidation.‖ As for the difficulty of ―searching‖ for such provisions, the Delaware Corporations law has an entire subchapter entitled ―Merger, Consolidation or Conversion.‖ 8 Del. C. Chapter 1, Subchapter IX. Fourteen Case: 12-1647 Document: 25 Page: 49 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 50 of 78 PageID: 1974 39 sections of the statute expressly mention ―merger‖ or ―consolidation‖ in their names. Id. §§ 251-61, 263, 264, 267. C. There Is No Ambiguity In The License Agreement Justifying Resort To Extrinsic Evidence Cordis‘s extensive reliance on extrinsic evidence, including the self-serving testimony of its own executives (see Blue Br. at 59-63), is unavailing because the prerequisite for the admission of such evidence—an ambiguity in the language of the agreement—has not been met. See 13 N. Enters., Inc. v. Bruner, Civ. A. 1179- K, 1992 WL 187630, at *2 (Del. Ch. July 8, 1992) (Delaware law forbids a court from ―consider[ing] parol evidence to interpret a clear and unambiguous contract, especially when the parol evidence is [] contrary to the parties written agreement‖); Matulich v. Aegis Commc’ns Grp., Inc., Civ. A. 2601-CC, 2007 WL 1662667 (Del. Ch. May 31, 2007), aff’d, 942 A.2d 596 (Del. 2008) (refusing to ―look beyond the four corners of the document to search for extrinsic evidence of intent‖ when ―[t]here is no ambiguity in the language‖).3 As Cordis acknowledges, a ―‗contract is not ambiguous simply because the parties do not agree on its proper construction,‘ but rather is ambiguous only ‗when 3 Although any testimony by Abbott‘s witnesses regarding the meaning of unambiguous terms in the License Agreement would be as inadmissible as that of Cordis‘s witnesses, it is interesting to note that, despite having taken the depositions of Abbott witnesses, Cordis points to no testimony from Abbott to support Cordis‘s construction of ―merger‖ or ―consolidation.‖ (Cf. Blue Br. at 61- 62 (citing testimony of Abbott employees as to other issues).) Case: 12-1647 Document: 25 Page: 50 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 51 of 78 PageID: 1975 40 the provisions in controversy are reasonably or fairly susceptible to different reasonable interpretations.‖ (Blue Br. at 58 (quoting Axis Reinsurance Co. v. HLTH Corp., 993 A.2d 1057, 1062 (Del. 2010).) Thus, absent two reasonable constructions of a contract provision, there is no ambiguity justifying resort to extrinsic evidence. See Rhone-Poulenc Basic Chems. Co. v. Am. Motorists Ins. Co., 616 A.2d 1192, 1196 (Del. 1992) (―a contract is ambiguous only when the provisions in controversy are reasonably or fairly susceptible of different interpretations or may have two or more different meanings‖); United Rentals, Inc. v. RAM Holdings, Inc., 937 A.2d 810, 830 (Del. Ch. 2007) (―contracts are ambiguous when the provisions in controversy are reasonably or fairly susceptible of different interpretations or may have two or more different meanings‖). As shown above, the district court‘s construction of § 10.4 of the License Agreement is reasonable, while Cordis‘s construction is not. Because there is only one reasonable construction of the contract, there is no ambiguity justifying consideration of Cordis‘s extrinsic evidence.4 Cordis‘s reliance on parol evidence is particularly improper in light of the integration clause in the License Agreement, which provides: ―This Agreement, 4 Even if the Court were to find an ambiguity in the License Agreement, such ambiguity must be resolved by binding arbitration, in accordance with the dispute resolution procedures specified in § 10.9 and Schedule 10.9 of the agreement. A3916; A3922-25; see A4868-70. Case: 12-1647 Document: 25 Page: 51 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 52 of 78 PageID: 1976 41 together with the schedules, constitutes the entire agreement between the Parties concerning the subject matter hereof and supersedes all written or oral prior agreements or understandings with respect hereto.‖ A3913 (License Agreement § 10.1); see id. (License Agreement § 10.2 (―Neither party shall claim any amendment, modification or release from any provision hereof by mutual agreement, unless in writing signed by an authorized representative of each Party‖)). Where a contract contains an integration provision, parol evidence will not be admitted to vary or contradict the intent of the parties as expressed in the writing. Leaf Fin. Corp. v. ACS Servs., Inc., No. 07C-02-003-MJB, 2010 WL 1740884, at *4 (Del. Super. Ct. Apr. 30, 2010) (declining to consider parol evidence where the agreement ―provides it is a fully integrated agreement‖); Highlands Ins. Grp., Inc. v. Halliburton Co., No. 17971, 2001 WL 287485, at *8 (Del. Ch. Mar. 21, 2001) (―Integration clauses normally bar the use of parol evidence to vary or contradict a contract‖); Interim Healthcare, Inc. v. Spherion Corp., 884 A.2d 513, 552 (Del. Super. Ct. 2005) (―The contractual allocation of risk was etched in stone when the parties included an integration clause, in which they acknowledged that the Agreement … represented the sole and complete understanding of the parties‖). Case: 12-1647 Document: 25 Page: 52 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 53 of 78 PageID: 1977 42 Because there is no ambiguity in the License Agreement, and especially in light of the integration clause of the agreement, the Court should disregard Cordis‘s extrinsic evidence.5 II. THE DISTRICT COURT PROPERLY ENTERED SUMMARY JUDGMENT THAT PROMUS DOES NOT MEET THE “UNDULATING” LIMITATIONS The majority of briefing on claim construction and infringement issues before the district court concerned the ―undulating‖ limitations of the asserted claims of the ‗604 patent and ‗240 patent and the impact of this Court‘s analysis in Fischell I. The district court construed those limitations to require ―rising and 5 Even if the Court were to consider it, the extrinsic evidence does not support the conclusion that ―neither Cordis nor Abbott has ever acted as though the Agreement extends to the business that Abbott acquired from Guidant.‖ (Blue Br. at 61.) As an initial matter, Cordis cites no evidence that it has ever placed Abbott on notice that Abbott‘s sales of Promus to BSC were unauthorized—presumably, the first thing Cordis would do if it believed that its licensee‘s sales were not covered by the license and infringing. See A3931 (testimony by Cordis‘s corporate representative that Cordis never communicated to Abbott that Abbott has violated the License Agreement by selling Promus stents to BSC). In any event, Abbott‘s failure to pay royalties under the License Agreement is entirely consistent with BSC‘s alternative defense—i.e., that, as the district court found, Promus does not practice the claims of the Fischell Patents. Because the License Agreement requires Abbott to pay royalties only on products that, but for the license, would infringe valid claims of the licensed patents, A3902-04 (License Agreement §§ 1.17, 3.1), Abbott would pay no royalties if it did not believe the Promus stent practiced the claims of the Fischell Patents. Although [ Redacted ] (Blue Br. at 62), [ Redacted ] A4777-78 [ Redacted ] Case: 12-1647 Document: 25 Page: 53 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 54 of 78 PageID: 1978 43 falling in waves, having at least a crest and a trough.‖ Having admittedly misapplied that construction in Fischell I,6 Cordis claims that it has now come to a proper understanding of the construction—one that distinguishes between the non- infringing NIR stent and the allegedly infringing Promus stent. Like Cordis‘s theory of infringement in Fischell I, Cordis‘s revised theory departs from both the district court‘s unchallenged construction and Fischell I‘s application of that construction. A. This Court’s Opinion In Fischell I Confirmed The District Court’s Construction Of “Undulating” And The District Court’s Application Of That Construction Just as it attempted to avoid the necessary implications of the district court‘s construction of ―undulating‖ in Fischell I, Cordis attempts to avoid them here. In particular, Cordis attempts to argue that this Court effectively revised the district court‘s construction. (Blue Br. at 41-42.) Cordis suggests that, under this Court‘s ―clarification‖ of the district court‘s construction, all that is really required for an 6 As Dr. Buller testified in deposition, ―[m]y opinions before were incorrect, using [the Federal Circuit‘s] analysis, and that is why I have provided a supplemental report to provide what I now believe to be the correct analysis. I‘m accepting what they say. There was a time at which I believed, yes, you needed a crest and a trough, but I didn‘t believe … that implicit in that was a requirement for a curved structure and for a curve that changed direction and went through a point of inflection. And I believe that the structures … such as sawtooths … could fulfill the claim term ‗undulating.‘ And it‘s now clear to me that they cannot, and that‘s why I have adapted my analysis.‖ A4450 (325:11-326:2). Case: 12-1647 Document: 25 Page: 54 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 55 of 78 PageID: 1979 44 ―undulating‖ longitudinal or connector is one curve separated from another by a ―point of inflection.‖ (Id.)7 Thus, according to Cordis, Promus infringes the ―undulating‖ limitations merely because ―there is a point of inflection between the purple curve and each of the blue curves‖ in the diagram shown below: (Blue Br. at 16.) Similarly, Cordis asserts that Promus infringes because it purportedly has ―connectors with multiple waves, and the curves extend beyond two points of inflection.‖ (Id. at 46.) Having jettisoned its pre-Fischell I ―points on a sine wave‖ theory of infringement, Cordis‘s post-Fischell I ―two curves separated by a point of inflection‖ theory of infringement is represented pictorially in the diagram below. 7 This Court stated that ―the terms ‗crest‘ and ‗trough,‘ as used in the district court‘s claim construction, implicate changes of direction, with the curve extending beyond the point of inflection.‖ A574-575. In so doing, however, this Court made clear that its reference to ―the curve extending beyond the point of inflection‖ did not replace or alter the construction ―rising and falling in waves, thus having at least a crest and a trough.‖ The Court further noted that ―[t]he district court‘s post-verdict elaboration on this point only clarified what was inherent in the construction.‖ A575. Case: 12-1647 Document: 25 Page: 55 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 56 of 78 PageID: 1980 45 (Id.) As demonstrated in these portions of Cordis‘s briefing, its position depends on the premise that the curves of a longitudinal or connector need have no particular orientation with respect to the longitudinal axis of the stent to be ―undulating.‖ Perhaps nowhere is this so clear as in the diagram on page 51 of Cordis‘s principal brief, in which Cordis has rotated select portions of Promus‘s connector to make it appear more like the undulating longitudinal of Figure 8 of the Fischell patents. Case: 12-1647 Document: 25 Page: 56 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 57 of 78 PageID: 1981 46 Properly oriented, the comparison would actually look like this: This is immaterial for Cordis because it insists that the relative orientation of the curves in a stent is irrelevant to whether they are ―undulating.‖ As Dr. Buller testified, ―clearly, the concavity and convexity don‘t need to be upward and downward‖ but ―could be to the left and right, for instance.‖ A4932-33 (336:34- 337:5). BSC, on the other hand, took the position that an ―undulating‖ longitudinal or connector must rise and fall with respect to the longitudinal axis of the stent. Cordis claims that ―[n]othing in the language of the claims, or in the specification or prosecution history, compels this view.‖ (Blue Br. at 51.) The Summary Of Invention plainly states, however, that the inventors‘ stent possesses ―either straight or undulating wires that are placed to be generally parallel to the longitudinal axis of the vessel into which the stent is deployed.‖ A63 (1:67-2:3). Case: 12-1647 Document: 25 Page: 57 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 58 of 78 PageID: 1982 47 Cordis‘s rotated version of Promus‘s connector is not parallel to the stent axis or the vessel in which it is placed; instead, it traverses them diagonally. Moreover, the district court‘s unchallenged construction itself turns on the same sense of orientation. It is not enough for an ―undulating‖ longitudinal to curve in one direction and then in another; it must ―rise‖ and ―fall‖; it must have both a ―crest‖ and a ―trough.‖ These are terms that necessarily implicate a sense of direction and orientation. And the only plausible orientation (as evinced in the Fischell Patents themselves) is vis-à-vis the longitudinal axis of the stent. The specification describes the elements in question not merely as ―undulating‖ structures, but as ―undulating longitudinals.‖ See A57 at [54]; id. at Abstract; A58 (1:53, 2:1-2, 2:37); A64 (3:50-54). Cordis responds that applying the district court‘s claim construction impermissibly limits the claims to the preferred embodiment as represented in Figure 8. (Blue Br. at 49.) This argument is wrong for two reasons. First, the cases cited by Cordis stand for the unremarkable proposition that, in construing claims, a court should not limit the scope of the claims to the preferred embodiment of the invention. None of the cases has anything to do with the application of the language of an unchallenged claim construction more than 10 years after construction has taken place. Case: 12-1647 Document: 25 Page: 58 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 59 of 78 PageID: 1983 48 Second, BSC‘s understanding of the district court‘s construction—which the district court itself endorsed—does not limit the claims to the preferred embodiment as shown in Figure 8. For example, while the crests and troughs in Figure 8 are identical in shape and size, and merely inverted, it has never been BSC‘s position that a claimed ―undulation‖ is so limited. The diagrams below show just three of the many possible ―undulating‖ connectors under the district court construction. As shown, the trough need not be inversely identical to the crest (as in the preferred embodiment of Figure 8); they may vary in width, height and slope. Under the district court‘s construction, however, each crest and trough must rise and fall vis-à-vis the longitudinal axis of the stent—otherwise the terms ―rise‖ and ―fall‖ and ―crest‖ and ―trough‖ have no meaning at all. B. The District Court Properly Looked To Fischell I In Applying Its Unchallenged Construction To Promus Cordis contends that the district court also erred in its analysis of the NIR stent at issue in Fischell I. In this regard, Cordis first argues that the district court should not have considered NIR at all, insisting that ―[c]omparing Promus to NIR, Case: 12-1647 Document: 25 Page: 59 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 60 of 78 PageID: 1984 49 rather than to the asserted claims, was legal error.‖ (Blue Br. at 42.) This argument mischaracterizes the district court‘s analysis. Of course, as the cases cited by Cordis indicate, a trial court should not compare the accused product to the patentee‘s product to determine infringement. (Blue Br. at 43.) That is not what the district court did, however. Instead, it analyzed Fischell I‘s application of a specific claim construction to one product (NIR) in determining the proper application of the exact same construction to a very similar product (Promus). In other words, it rightly looked to this Court‘s analysis in Fischell I as the closest and most compelling of legal precedents. In the end, that precedent was dispositive. As the district court recognized, ―[Fischell I] forecloses Cordis‘s arguments at bar that the Promus stent infringes these asserted claims.‖ A30 (quoting Fischell I, 658 F.3d at 1358). Next, Cordis argues that—even if the district court did not err in considering this Court‘s analysis of NIR—it nonetheless misunderstood that analysis. Cordis admits that it originally took the position that ―the NIR connector contains three curves (two concave curves at the ends, and one convex curve in the middle), with two points of inflection.‖ (Blue Br. at 44.) Thus, Cordis‘s own understanding of NIR is shown below: Case: 12-1647 Document: 25 Page: 60 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 61 of 78 PageID: 1985 50 Cordis does not dispute that, if its present theory of infringement were correct, then NIR should have been found to have infringed. Cordis claims, however, that this Court made a factual determination that NIR‘s connector ―is a single curve, with no point of inflection‖ and on this basis concluded that there was no infringement of the ―undulating‖ limitations. (Blue Br. at 44-45). To arrive at this assertion, Cordis attempts to parse this Court‘s own analysis of a diagram of NIR based on the diagram below (which appears in the Court‘s opinion in Fischell I): Case: 12-1647 Document: 25 Page: 61 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 62 of 78 PageID: 1986 51 A579. Looking to a variety of other materials, the Fischell I Court concluded that NIR‘s actual geometry ―resembles point B and C, rather than point A.‖ Fischell I, 658 F.3d at 1358. Notwithstanding Cordis‘s representations on appeal, the Fischell I Court never said that ―point B‖ lacks any point of inflection, however. Nor did it say that ―point B‖ shows only one curve. To the contrary, while not arcing as fully as ―point A,‖ ―point B‖ clearly does curve in another direction (thereby creating a point of inflection), before leveling out, as shown below. A549. Because this curved portion did not ―fall‖ (i.e., descend vis-à-vis the stent‘s longitudinal axis), however, it ―lack[-ed] the change in direction required for literal infringement‖ (as opposed to any change of direction whatsoever). Id. The focus of the Fischell I Court‘s analysis was not upon whether the segments above possessed a perceptible curve at the top of NIR‘s U-loops. Nor did the Fischell I Court conclude that the U-loops were not ―undulating‖ because Case: 12-1647 Document: 25 Page: 62 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 63 of 78 PageID: 1987 52 they ended abruptly, as Cordis claims. Instead, the Fischell I Court concluded that they were not undulating because ―[they] merely level out‖—an observation that makes no sense under Cordis‘s characterization of the Court‘s analysis. ―Leveling out‖ plainly indicates some continuation, not merely an abrupt truncation. And, like ―rising‖ and ―falling,‖ ―leveling out‖ plainly implicates a sense of orientation with respect to the rest of the stent. Like NIR‘s U-loops, Promus possesses ―U- shaped connecting elements that ‗merely level out,‘ rather than rising and falling in waves,‖ just as the district court recognized. A30 (quoting Fischell I, 658 F.3d at 1358). C. Cordis Cannot Manufacture A Factual Dispute To Avoid Summary Judgment As it did in Fischell I, Cordis resorts to the proffered testimony of Dr. Buller in an effort to create an issue of material fact as to whether Promus meets the ―undulating‖ limitations of the asserted claims of the ‗604 patent and ‗240 patent. (Blue Br. at 24.) Because the architecture of Promus is not in dispute, however, Dr. Buller cannot create a genuine issue of material fact to ward off summary judgment. This Court‘s recent decision in K-Tec v. Vita-Mix, 696 F.3d 1364 (Fed. Cir. 2012) is on point. In that case, the alleged infringer‘s expert attempted to ―redraw‖ the accused product so that it lacked one of the claimed limitations and thereby avoid summary judgment of infringement. Id. at 1374. This Court noted that ―‗[a] party does not manufacture more than a merely colorable dispute simply Case: 12-1647 Document: 25 Page: 63 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 64 of 78 PageID: 1988 53 by submitting an expert declaration asserting that some-thing is black‘ when no reasonable juror reviewing the evidence could reach such a conclusion.‖ Id. (quoting Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1080 (Fed. Cir. 2005)). The Court emphasized that this ―is especially true in cases involving relatively simple technology[.]‖ Id. (citing Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004)). For the same reasons that Vita-Mix‘s expert could not create a genuine issue of material fact in K-Tec, the district court rightly found that ―Buller‘s opinion … [was] insufficient to withstand summary judgment‖ here. A30. III. THE DISTRICT COURT PROPERLY CONSTRUED “CIRCUMFERENTIALLY EXTENDING TURN BACK PORTION” As noted earlier, after the district court concluded in Fischell I that no reasonable jury could find that NIR possessed ―undulating‖ longitudinals, Cordis amended the pending claims of the application that would issue as the ‗817 patent to replace the ―undulating‖ language with the phrase ―circumferentially extending turn back portion.‖ Its intent in so doing is clear. It sought to evade the district court‘s ruling that the longitudinals or connectors of the Fischell Patents must ―rise and fall in waves‖ and have ―at least a crest and a trough.‖ Thus, Cordis insisted that the phrase could and should be interpreted more broadly than ―undulating.‖ In particular, Cordis asserted that ―‗turn back portion‘ should be construed to mean Case: 12-1647 Document: 25 Page: 64 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 65 of 78 PageID: 1989 54 ‗[a] portion that extends back in the general direction from which it came.‘‖ (Blue Br. at 22.) Indeed, under Cordis‘ construction, a single curve in an otherwise straight connector, no matter how minimal, would constitute a ―circumferentially extending turn back portion.‖ Cordis‘s claim that this understanding of ―circumferentially extending turn back portion‖ is ―firmly grounded in both the intrinsic and extrinsic evidence‖ and finds support in the term‘s plain meaning, the specification, and the prosecution history (Blue Br. at 22, 33) is unfounded. In actuality, there is no recognized ―plain meaning‖ of ―circumferentially extending turn back portion‖ in the relevant art. The phrase is foreign to the specification. And the prosecution history forecloses Cordis‘s proposed construction for reasons set forth in Fischell I. A. There Is No Evidence That “Circumferentially Extending Turn Back Portion” Would Have Any “Plain Meaning” In The Art Although Cordis chides the district court for straying from ―Cordis‘s proposed plain meaning construction‖ (Blue Br. at 30), in fact, there is no support for Cordis‘s suggestion that, in 1994, the phrase ―circumferentially extending turn back portion‖ had a customary meaning to one of skill in the art. A term‘s ―plain meaning‖ is not its meaning to a lay person; it is ―the ordinary and customary meaning[] … [to] those of ordinary skill in the art.‖ Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003). Aside from the Case: 12-1647 Document: 25 Page: 65 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 66 of 78 PageID: 1990 55 naked declaration of Dr. Buller, there was absolutely no evidence before the district court that ―circumferentially extending turn back portion‖ possessed any ordinary meaning to one of skill in the art in 1994. Cordis failed to point to a single prior art patent, a single reference in the field, a single treatise, or even a single medical or engineering dictionary that uses the phrase ―circumferentially extending turn back portion‖ (or even ―turn back‖ portion). It was for this reason that the district court found a lack of ―any record evidence that the limitation employs a term of art known to those of ordinary skill in the art at the time.‖ A25. B. The Specification Provides No Support For Cordis’s Construction Lacking any ―guidance of record as to the shape of the turn back portion of claim 1,‖ the district court examined the Fischell Patents‘ specification. Not only was the phrase undefined in the specification, it was utterly absent. A24-26. Throughout this litigation, Cordis attempted to ground its construction of ―circumferentially extending turn back portion‖ in the patents‘ Figure 8. (Blue Br. at 23.)8 As the district court pointed out, however, nothing in the accompanying text describes any portion of Figure 8 as a ―circumferentially extending turn back portion.‖ Rather, ―[t]he specification describes figure 8 as ‗a side view of a post- 8 The district court noted, ―Cordis only identifies figure 8 as reflective of its construction, which illustration Cordis has highlighted (for purposes of this litigation) without reference to either the intrinsic or extrinsic record for support.‖ A25. Case: 12-1647 Document: 25 Page: 66 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 67 of 78 PageID: 1991 56 deployment stent structure which utilizes two undulating longitudinals on opposite sides of the stent for improved placement in curved vessels.‖ A24 (citing ‗817 patent, 2:38-40). Likewise, nothing in the text of the Fischell Patents suggests that structure shown in Figure 8 can be truncated, or even adjusted, to produce a single U-shaped curve, while retaining the purported advantages of the invention. The district court thus lacked any basis in the intrinsic record or in extrinsic evidence about what was known to one of ordinary skill in the art from which to draw in construing ―circumferentially extending turn back portion‖ other than the specification‘s disclosure of an ―undulating‖ longitudinal. In this vacuum, the district court was perfectly justified in construing the phase according to the only portion of the Fischell Patents showing and describing a non-linear connector: ―The court, therefore, construes ‗circumferentially extending turn back portion‘ consistent with the only plausible construction supported by figure 8 of the specification: an ‗undulating portion, or a portion that rises and falls in waves.‘‖ A27. Such a construction is consistent with this Court‘s admonition that the claims of a patent cannot be broader than the original invention. Honeywell Int’l Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (―The public is entitled to take the patentee at his word.‖). Case: 12-1647 Document: 25 Page: 67 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 68 of 78 PageID: 1992 57 C. Cordis’s Construction Is Foreclosed By The Prosecution History Even if Cordis‘s construction had some support in the specification or in what was known to one of skill in the art in 1994 (which it does not), it still would have been erroneous for the district court to accept it because, as Fischell I makes clear, it is foreclosed by the prosecution history. Cordis now claims that the Fischell Patents were the first to teach the use of ―non-linear‖ connecting struts. (Blue Br. at 8.) This simply is not true. As explained in Fischell I, during the prosecution of the original ‗128 application (which issued as the ‗312 patent), ―the Fischells traversed an anticipation rejection over U.S. Patent No. 5,269,802 (―Garber‖), directed to a prostatic stent, by arguing that the invention disclosed in Garber lacked the ‗undulating shape or contour‘ required by the claims of their own invention.‖ Fischell I, 658 F.3d at 1356-57. This Court noted that even ―a cursory review of that patent shows the structures at issue have an obvious and defined curve.‖ Id. at 1357. Because of this representation, Fischell I held as a matter of law that Cordis‘s claims could not be interpreted too broadly as to cover ―a single curve.‖ Id. (citing Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999)). The fact that Cordis substituted ―circumferentially extending turn back portion‖ for ―undulating‖ in the asserted claims of the ‗817 is not dispositive. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349-50 (Fed. Cir. 2004) Case: 12-1647 Document: 25 Page: 68 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 69 of 78 PageID: 1993 58 (statements in prosecution history that ―unambiguously reflect[ed] [the patentee‘s] understanding of its own inventions‖ were limiting on claims in later patents despite variations in claim language). Nor is it dispositive that there are dependent claims that may claim a single U-shaped connector (as in claim 14) or two U- shaped segments open in opposite directions (as in claim 15). As the Court pointed out in Fischell I, a construction covering a single curve as disclosed in the prior art is ―foreclosed‖ regardless of ―whether Cordis couches its argument in terms of claim differentiation, the phrase ‗comprising a ‗U‘ shaped curve,‘ or dictionary entries.‖ 658 F.3d at 1357 (citations omitted); see also Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998) (―the doctrine of claim differentiation cannot broaden claims beyond their correct scope, determined in light of the specification and the prosecution history and any relevant extrinsic evidence‖). It was thus entirely proper for the district court to interpret the later- added ―circumferentially extending turn back portion‖ to require more than just a single curve and to be no broader than ―undulating.‖ This Court‘s analysis in ICU Med., Inc. v. Alaris Medical Systems, 558 F.3d 1368 (Fed. Cir. 2009) is highly instructive. That case involved a patent with claims covering medical valves used in the transmission of fluids to or from a medical patient. Id. at 1372. Certain of the claims required ―spike elements.‖ Id. at 1372-73. Interpreting these elements to require a pointed spike capable of Case: 12-1647 Document: 25 Page: 69 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 70 of 78 PageID: 1994 59 piercing the valve (rather than adopting the patentee‘s broad, ―plain meaning‖ construction of ―upward projection‖), the district court granted summary judgment of non-infringement. Id. at 1373-74. Upholding the district court, this Court noted that ―[t]he specification never suggests that the spike can be anything other than pointed.‖ Id. at 1375. This Court further noted that the patentee, like Cordis here, ―offer[-ed] no support from any intrinsic or extrinsic source in support of its claim that the ordinary meaning of spike would include a non-pointed structure.‖ Id. Lastly, this Court rejected a claim differentiation argument virtually identical to the one advanced by Cordis here. In particular, the patentee argued that the district court‘s construction was impermissible because it violated the doctrine of claim differentiation insofar as certain dependent claims explicitly recited ―pointed‖ spikes. Id. at 1376. The district court rejected that argument, pointing out that the dependent claim (like Cordis‘s ―circumferentially extending turn back portion‖ limitations) had been added by amendment long after the original filing date. Id. This Court agreed with the district court, counseling that ―[c]laim differentiation is a guide, not a rigid rule. If a claim will bear only one interpretation, similarity will have to be tolerated.‖ Id. (quoting Autogiro Co. of Am. v. United States, 384 F.2d 391, 404 (Ct. Cl. 1967)). Here, for the same reasons, claim construction cannot trump the intrinsic evidence as disclosed in the specification. Nor can it trump the fundamental premise that a ―patentee [must] be Case: 12-1647 Document: 25 Page: 70 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 71 of 78 PageID: 1995 60 held to what he declares during the prosecution of his patent.‖ Springs Window Fashions L.P. v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003). D. The District Court Did Not Conflate Invalidity And Claim Construction Finally, Cordis claims that the district court improperly conflated issues of invalidity and claim construction in its analysis of ―circumferentially extending turn back portion.‖ It did not. This Court has consistently maintained that ―[c]laims are generally construed so as to sustain their validity, if possible.‖ Becton, Dickinson & Co. v. TYCO Healthcare Grp., 616 F.3d 1249, 1255 (Fed. Cir. 2010) (quoting Whittaker Corp. v. UNR Indus., Inc., 911 F.2d 709, 712 (Fed. Cir. 1990)). Such an interpretive strategy is only proscribed ―when the claims are susceptible to only one reasonable construction.‖ Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1215 (Fed. Cir. 2008). Thus, for Cordis to demonstrate that the district court erred in considering the claims‘ validity in interpreting ―circumferentially extending turn back portion‖ it must show that its proffered construction of ―circumferentially extending turn back portion‖ was the only reasonable construction of the phrase. For the reasons stated above, not only was that construction not the only reasonable one, it lacked any support in the intrinsic evidence or in evidence of how the phrase would be interpreted by one of ordinary skill in the art in 1994. Case: 12-1647 Document: 25 Page: 71 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 72 of 78 PageID: 1996 61 In the alternative Cordis argues that, even if the district court did not err in considering the claims‘ validity in construing ―circumferentially extending turn back portion,‖ it nonetheless misapplied the law of indefiniteness. It did not. For a claim to be sufficiently definite under 35 U.S.C. § 112, it must possess ―a meaning discernible to one of ordinary skill in the art when construed according to correct principles.‖ Metabolit Labs., Inc. v. Lab. Corp. of Am., 370 F.3d 1354, 1366 (Fed. Cir. 2004) (citing Union Pacific v, Chesapeake Energy, 236 F.3d 684, 692 (Fed. Cir. 2001)). Here, for the reasons set forth above, the only guidance before the district court as to the meaning of ―circumferentially extending turn back portion‖ was the ―undulating longitudinal‖ of Figure 8 of the specification, the only intrinsic support identified by Cordis itself. Rather than conclude that Cordis‘s belatedly coined claim term was insolubly indefinite, the district court properly construed the language accordingly. Not only is the district court‘s construction consistent with the specification‘s only disclosure of a non-linear longitudinal, it is also consistent with what the inventors themselves claimed to render the invention novel over the prior art—the very presence of ―an undulating shape or contour.‖ See United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942) (―The statutory requirement of particularity and distinctness in claims is met only when [the claims] clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise.‖). Case: 12-1647 Document: 25 Page: 72 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 73 of 78 PageID: 1997 62 Moreover, the district court‘s construction preserved the claims from another clear threat to their validity. As explained in BSC‘s summary judgment papers, if the ―circumferentially extending turn back portion‖ is not based on and moored to the original application‘s disclosure of an ―undulating‖ longitudinal, then it is new matter, and the claims are not entitled to the original application‘s 1994 priority date. See AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1246 (Fed. Cir. 2003) (―When the earlier application lacks any support in the written description for the new subject matter, the new matter [in a subsequent application] cannot claim priority back to the original filing.‖) (Rader, J., concurring). This Court‘s decision in Anascape, Ltd. v. Nintendo of America, Inc., 601 F.3d 1333 (Fed. Cir. 2010) is directly on point. Both before the district court and on appeal, Cordis argued that the disclosure of what is explicitly defined as an ―undulating longitudinal‖ in the 1994 application is sufficient to support a simpler and broader structure with just a crest or a trough, but not both. Under Anascape, 601 F.3d at 1333, that argument is untenable. Like the original specification of the Fischell Patents, the specification of the patents in Anascape disclosed one configuration of a more complex design—an input member for a video game that operated in six degrees of freedom. Id. at 1335. The later filed claims recited input members of lesser complexity—i.e., input members of ―fewer than six degrees of freedom.‖ Id. at 1336. Anascape took the position ―that these changes Case: 12-1647 Document: 25 Page: 73 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 74 of 78 PageID: 1998 63 [were] not ‗new matter‘‖ because they were implicit in the earlier disclosure—just as Cordis now argues that a ―circumferentially extending turn back portion‖ is implicit in the disclosure of an ―undulating longitudinal.‖ Id. at 1338. Dismissing the argument as ―untenable,‖ this Court emphasized that the applicant had removed limitations, ―and new claims were provided of commensurately broader scope. This is classical new matter.‖ Id. If the district court had construed ―circumferentially extending turn back portion‖ more broadly than ―undulating,‖ the ‗817 claims would have contained new matter, and would have been stripped of their 1994 priority. As Cordis conceded below, the claims would have been invalid in view of the prior art. A3863; A3890-92; A3893-95. CONCLUSION For the reasons stated herein, the district court‘s judgment should be affirmed. DATED: January 16, 2013 Respectfully submitted, By: /s/ Matthew M. Wolf Matthew M. Wolf Edward Han John E. Nilsson Seth I. Heller ARNOLD & PORTER LLP 555 Twelfth Street, N.W. Washington, DC 20004 Telephone: (202) 942-5000 Facsimile: (202) 942-5999 Case: 12-1647 Document: 25 Page: 74 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 75 of 78 PageID: 1999 64 Counsel for Defendants-Appellees Boston Scientific Corporation and Boston Scientific Scimed, Inc. Case: 12-1647 Document: 25 Page: 75 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 76 of 78 PageID: 2000 CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of the foregoing NONCONFIDENTIAL BRIEF OF DEFENDANTS-APPELLEES BOSTON SCIENTIFIC CORPORATION AND BOSTON SCIENTIFIC SCIMED, INC. will be served this 16th day of January 2013 on the following counsel of record by email through a Notice of Docket Activity generated by the Court‘s CM/ECF system pursuant to Rule ECF-6(A) of the Court‘s Administrative Order Regarding Electronic Service. David T. Pritikin [dpritikin@sidley.com] Constantine L. Trela, Jr. [ctrela@sidley.com] William H. Baumgartner [wbaumgartner@sidley.com] Anthony Balkissoon [abalkissoon@sidley.com] SIDLEY AUSTIN LLP Bank One Plaza 1 South Dearborn Street Chicago, IL 60603 Paul J. Zegger [pzegger@sidley.com] SIDLEY AUSTIN LLP 1501 K Street, N.W. Washington, DC 20005 /s/ Matthew M. Wolf Matthew M. Wolf ARNOLD & PORTER LLP 555 Twelfth Street, N.W. Washington, DC 20004 Telephone: (202) 942-5000 Facsimile: (202) 942-5999 Email: matthew.wolf@aporter.com Case: 12-1647 Document: 25 Page: 76 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 77 of 78 PageID: 2001 CERTIFICATE OF COMPLIANCE This brief complies with the type-volume limitation of Federal Rules of Appellate Procedure 32(a)(7)(B). The brief contains 13,180 words, excluding the parts of the brief exempted by Federal Rule of Appellate Procedure 32(a)(7)(B)(iii). /s/ Matthew M. Wolf Matthew M. Wolf Counsel for Defendants-Appellees Boston Scientific Corporation and Boston Scientific Scimed, Inc. Case: 12-1647 Document: 25 Page: 77 Filed: 01/16/2013Case 3:16-cv-00928-PGS-LHG t 96-5 Filed 02/28/17 Page 78 of 78 PageID: 2002 CERTIFICATE OF SERVICE I hereby certify that on this date, I caused a true and correct copy of the foregoing: (1) Plaintiffs’ Brief in Opposition to Abbott’s Motion to Dismiss; (2) Declaration of Corinne McCann Trainor; and (3) Exhibits A through D to be served upon all Counsel of Record via the Court’s CM/ECF system. Dated: February 28, 2017 /s/ Karen A. Confoy Karen A. Confoy Case 3:16-cv-00928-PGS-LHG Document 96-6 Filed 02/28/17 Page 1 of 1 PageID: 2003