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CONMED CORPOARATION v. LUDLOW CORPORATION

December 9, 2002

CONMED CORPORATION, AND NDM, INC., PLAINTIFFS,
V.
LUDLOW CORPORATION, AND THE LUDLOW COMPANY, LP, DEFENDANTS.



The opinion of the court was delivered by: David N. Hurd, United States District Judge

MEMORANDUM-DECISION and ORDER

I. INTRODUCTION

Plaintiffs, ConMed Corporation and NDM, Inc. (collectively "ConMed"), commenced the instant action against defendants, Ludlow Corporation and Ludlow Company, LP (collectively "Ludlow"), pursuant to 35 U.S.C. § 271, et. seq., asserting one count of patent infringement. Specifically, plaintiffs allege continuing infringement of its U.S. Patent No. 4,674,511 by defendants' manufacture and sale of the Kendall Care 210 Resting ECG Electrode. Ludlow asserts counterclaims seeking (1) a declaratory judgment of non-infringement; and (2) a declaratory judgment that ConMed's patent is invalid. Both parties have moved for summary judgment.

Oral argument was heard on April 12, 2002 in Utica, New York. Decision was reserved.

II. FACTS

ConMed owns U.S. Patent No. 4,674,511 (" the '511 patent") entitled "Medical Electrode."*fn1 A medical electrode is a device placed on a patient's skin that senses electrical stimulus emitted from the body. The electrode is connected to a machine, such as an electrocardiogram, that collects and interprets the signals sensed by the electrode.

A. Prosecution History of the '511 Patent

The initial application for the `511 patent was made by James Cartmell ("Cartmell") in 1984.*fn2 Cartmell's application contained twenty-four claims. The first claim provided as follows:

In a medical electrode of the type having a conductor and electrolyte means comprising a conductive adhesive for providing an electrolyte between said conductor and the skin of the patient and for adhering said electrode to the skin, the improvement wherein said electrode further comprises patient adhesive means which is more aggressive than said conductive adhesive for adhering an electrode to the skin for a longer period of time or with greater security than is possible with said conductive adhesive alone.

The patent application disclosed ten different embodiments, or configurations, of the electrode. Each embodiment was a variation of the basic invention and was supported by separate figures depicting the features of the particular embodiment. The United States Patent and Trademark Office ("USPTO") determined that the application contained two or more independent and distinct inventions. In the initial office action, serial 06/608-188, dated October 3, 1985, the USPTO restricted the invention claims under 35 U.S.C. § 121 for (a) inclusion of both product and process claims, and (b) inclusion of five independent and distinct embodiments (i.e., separately patentable products). (See Griem Aff. Ex. 2(D) at 104.) Accordingly, Cartmell was required to restrict the proposed inventions to either the product claims (claims 1-20) or the process claims (claim 21-24). The USPTO further found that

[a]pplicant is required under 35 U.S.C. § 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claims are deemed to be generic.

(Id. at 105.)

In response to the USPTO, Cartmell elected to prosecute product claims 1-20. Cartmell traversed the USPTO's requirement that he elect a single disclosed species for prosecution on the merits. Specifically, Cartmell argued that it was inappropriate to elect between FIGS. 15-16 and FIGS. 17-18 of the application because the inventions "are not patentably distinct." (Id. at 108.) In response to the USPTO's requirement that a single species be elected, together with a listing of all claims readable thereon, Cartmell elected "the species contained in FIGS. 15 and 16. Claims 1, 2, 3, 4, 6 and 7 are readable thereon." (Id.)

In February 1986, the USPTO found that

Claims 5 and 8-24 stand withdrawn from further consideration . . . as being drawn to a nonelected invention and species, the requirement having been traversed . . . [by Cartmell]. The election requirement is deemed to be proper since the embodiments of Figures 15-16 and 17-18 are not obvious variants and therefore patentably distinct. Generic claims do not evidence obviousness. The requirement is therefore made FINAL.

(Id. at 110.)

The USPTO rejected claims 1 and 6 under 35 U.S.C. § 102(b)*fn3 and 102(e)*fn4 "as being clearly anticipated by" certain other patents. (Id.) The USPTO rejected claims 2 and 7 pursuant to 35 U.S.C. § 103*fn5 "as being unpatentable" over certain other patents because "[t]he use of a conductive paint would have been obvious." (Id. at 111.) Finally, the USPTO rejected claims 3 and 4 pursuant to 35 U.S.C. § 103 because "[t]he particular structure of conductive adhesive overlying the paint would have been obvious over" another patent. (Id.)

Cartmell responded to the USPTO by amending his application. Cartmell's response to the USPTO action, dated August 11, 1986, amended claims 1, 6 and 7, canceled claims 2, 3, and 4 and retained claims 5 and 8 through 24 under 37 C.F.R. § 1.142(b). (Id. at 114-16). In his papers amending his application, Cartmell stated that:

Claims 1, 4, 6 and 7 are presented for prosecution at this time. . . . . [C]laim 1 is amended to recite that the conductor comprises a sheet of flexible material and conductive paint adhered to one face of said sheet, that the conductive adhesive forms a layer engaging said sheet in overlying relationship to at least a portion of said paint, and that the patient adhesive means is a layer on said one face of said sheet. This structure is in clear contrast to the prior art relied upon by the [PTO] in which, with the exception of Anderson et al `215, the patient adhesive is on a piece of tape or the like separate from the conductor. . . . [T]he Engel patent is most similar in appearance. However, its backing 20 and adhesive coating 22 are clearly on the side of the plate 12 opposite its skin-contacting face.

(Id. at 115).*fn6

In the final office action, dated October 3, 1986, the USPTO allowed claims 1 and 6; canceled claims 2 through 4; rejected claim 7 stating that it would be allowed if amended to overcome rejection under 35 U.S.C. § 112; and withdrew from consideration claim 5 and claims 8 through 24. (Id. at 119-120.)

Cartmell's response, dated December 3, 1986, amended claim 7 and added a new claim 25 based on an interview with the patent examiner. (Id. at 121.) Additionally, Cartmell's response canceled claim 5 and claims 8 through 24, placing the application in condition for allowance. (See id.) The USPTO January 5, 1987 Notice of Allowability confirmed the allowance of claims 1, 6, 7 and 25, and renumbered these claims 1 ...


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