that "the CIP application contains substantial new matter not found in the parent application." (Pl. Mem. at 32.) ConMed cites Studiengesellschaft Kohle M.G.H. v. Shell Oil Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997), for the proposition that "[c]laims in a CIP application are not entitled to the benefit of the filing date of a parent application where they contain new subject matter not described in the earlier application." (Pl. Mem. at 32.) ConMed argues that Erbe's CIP application is not entitled to the 1992 priority date because it contained new matter relating to the formation of an "argon cloud" and described low flow rates.
This argument cannot be accepted because "although there may be some variation in the scope of the claimed subject matter," Erbe's claims in the CIP application are substantially based upon the disclosures contained in the parent application. See Applied Materials, Inc. v. Advanced Semiconductor Materials America, Inc., 98 F.3d 1563, 1579 (Fed. Cir. 1996) (concurring opinion). The subject matter of the CIP application and the `009 application were substantially similar, excepting only those modifications which were necessary to distinguish the CIP application from the prior art. Accordingly, the patent examiner correctly concluded that these articles did not, as ConMed now argues, predate the priority date of the `745 application. It is held, therefore, that ConMed has failed to rebut the presumption of patent validity based upon the prior publication of the two articles.
2. Inequitable Conduct
ConMed next argues that the `745 patent is invalid because of Erbe's inequitable conduct before the USPTO and the district court for the District of Columbia. Where a party challenges the validity of a patent based upon an alleged intent to deceive or mislead the patent examiner, "clear and convincing evidence of conduct sufficient to support an inference of culpable intent [to deceive] is required." Northern Telecom, 908 F.2d at 939.
ConMed argues that the following supports an inference of culpable intent on the part of Erbe: (1) Erbe argued before the patent examiner that the use of argon gas as the "fluid" in the Manwaring patent was nonobvious, but took a contrary position in the litigation with Dr. Canady two days after receiving the `745 patent;*fn5 and (2) Erbe made the same arguments concerning Manwaring before the USPTO on a request for reexamination of the Canady patent. Because, ConMed argues, this position directly undercut Erbe's asserted basis for the novelty of the `745 patent, the advancement of it two days after receiving the `745 patent demonstrated an intent to deceive on the part of Erbe.
Erbe argues that ConMed has failed to produce clear and convincing evidence of an intent to deceive the patent examiner because "the duty [to disclose information] is limited to the individuals associated with the filing and prosecution of the patent application," and "the arguments cited by ConMed in the Canady litigation and reexamination were put forward by a different law firm from the firm responsible for prosecution of the `745 patent." (Def. Opp. at 10-11.) Erbe also argues that the issues relating to the validity of the Canady patent were different than those at issue in the prosecution of the `745 patent. While Erbe's argument is misplaced (in that the mere fact that different law firms were employed by Erbe is of little relevance to a determination of its culpability), it is held that ConMed has failed to produce clear and convincing evidence sufficient to support an inference to deceive on the part of Erbe.
Inequitable conduct includes affirmative misrepresentations of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive. Determination of inequitable conduct requires a two-step analysis. First, the trial court must determine whether the withheld reference meets a threshold level of materiality. The trial court must then also determine whether the evidence shows a threshold level of intent to mislead the USPTO. Once the threshold levels of materiality and intent have been established, the trial court is required to weigh materiality and intent. The more material the omission, the less evidence of intent will be required in order to find that inequitable conduct has occurred. In light of all the circumstances, the court must then determine whether the applicant's conduct is so culpable that the patent should be held unenforceable. See Baxter Int'l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1327-28 (Fed. Cir. 1998) (citation omitted).
In this case, ConMed has failed to meet its burden because it has failed to demonstrate any inequitable conduct on the part of Erbe. ConMed has not identified any information that was withheld by Erbe during the prosecution of the `745 patent, any fact that was misrepresented by Erbe, or any false information that was submitted by Erbe.*fn6 Instead, ConMed relies upon the apparently inconsistent arguments of counsel in two unrelated proceedings concerning the relative weight to be afforded to fully disclosed patents to conclude that Erbe misled the patent examiner. This showing is insufficient to clearly and convincingly demonstrate inequitable conduct on the part of Erbe. See Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1122 (Fed. Cir. 1998).
Even accepting ConMed's contention that the arguments are inconsistent, it is held that such arguments fail to demonstrate the requisite materiality. It is undisputed that Erbe did not conceal or withhold any documents or information from the patent examiner. Instead, it is alleged that Erbe merely proffered an argument to the patent examiner concerning the legal effect of materials already disclosed. The patent examiner was free to consider the scope and effect of these prior materials independently of the arguments of Erbe's counsel. Accordingly, the "misrepresentation" of Erbe cannot be considered material where, as here, the patent examiner was presented with all the information relevant to the issuance of the `745 patent and reached an independent decision as to the merits of Erbe's arguments.*fn7
3. Attorneys' Fees
ConMed has moved for an award of attorneys' fees based upon Erbe's inequitable conduct before the USPTO and the district court in the Canady litigation. Because, as discussed above, it is held that Erbe did not engage in such conduct, ConMed has failed to demonstrate the requisite "exceptional circumstances," an award of attorneys' fees is not appropriate. See Hycor Corp. v. Schlueter Co., 740 F.2d 1529, 1540-41 (Fed. Cir. 1984) (because district court erroneously found fraud on the USPTO, award of attorneys' fees was not warranted).
B. Infringement by ConMed
Having determined that ConMed has failed to rebut the presumption of validity of the `745 patent, the issue now becomes whether the ABC probe infringes Erbe's patent (either contributorily or by inducement). In order to resolve this issue, it is necessary to first construe the scope of the `745 patent.
It is well established that the process of claim construction begins with the language of the claim. See Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999) ("We begin, as with all claim interpretation analyses, with the language of the claims."). In construing a patent claim, a court may also look to the patent specification and the prosecution history. See Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999).
In `claim construction' the words of the claims are construed independent of
the accused product, in light of the specification,
the prosecution history, and the prior art. . . . The
construction of claims is simply a way of elaborating
the normally terse claim language  in order to
understand and explain, but not to change, the scope
of the claims.
Scripps Clinic v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991) (internal quotation omitted).
The patent specification and the prosecution history "constitutes a public record of the patentee's representations concerning the scope and meaning of the claims." Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 957 (Fed. Cir. 2000). Once an applicant defines or disclaims certain interpretations of its patent during the prosecution history in order to obtain approval, the patentee may be estopped from attempting to later redefine to include the disclaimed or disavowed subject matter. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd., 122 S.Ct. 1831, 1838 (2002). Erbe has the burden to show that the CIP application and June 27, 1997, amendment did not limit its patent as argued by ConMed. See id. at 1842.
1. Construction of the `745 Patent
ConMed argues that it does not infringe the `745 patent because the prosecution history demonstrates that Erbe narrowed the scope of its claimed invention to exclude the distinctive characteristics exhibited by the ABC probe — specifically, the use of a laminar flow, flow rates in excess of one liter per minute, and the use of pulsed, high frequency energy. ConMed relies on Erbe's statements and arguments before the patent examiner during the prosecution of the `745 patent to limit the scope of the `745 patent and to thereby demonstrate that its ABC probe does not infringe Erbe's patent. Erbe contests ConMed's interpretation of the statements at issue as "limitations" on the scope of the '745 patent.
ConMed argues that Erbe limited the scope of the `745 patent in two significant respects during the prosecution of that patent. The first alleged limitation is based upon the flow rate or velocity of the Erbe probe. According to ConMed, Erbe sought to distinguish its invention from the McGreevy patent by claiming that its probe did not have a sufficient flow rate or flow velocity to clear fluids from the tissue to be coagulated. Instead, ConMed asserts that the Erbe patent disclosed a probe that "employed a `low flow rate' of argon gas sufficient only to create an `inert gas atmosphere,' which Erbe further defined in the specification as a non-directed, non-laminar `argon cloud.'" (Plaintiffs' Memorandum of Law in Support of Motion for Partial Summary Judgment at 11 (hereinafter "Pl. Mem. at ___.").) According to ConMed, this limitation was expressed both in terms of the rate of flow, and the flow's laminar character, and that Erbe expressly disclaimed the probe's ability to general a laminar jet of ionized gas. (Pl. Mem. at 21-22 & n. 82.) The second alleged limitation is that the `745 patent is limited to a probe that operates by means of a continuous HF electrical signal.*fn8
ConMed argues that the patent prosecution history demonstrates that these limitations by Erbe were necessary in order for the patent examiner to approve its patent application. ConMed notes that both Erbe's original patent application, the `009 application, and the initial submission of the CIP application were rejected on obviousness grounds. ConMed also notes that the invention described in the `009 application had previously been patented by Dr. Canady.
According to ConMed, Erbe sought to distinguish its invention from Dr. Canady's through additional limitations to the scope of its patent. These limitations included addition of the terms "inert gas atmosphere," "non-directed, non-laminar" gas flow, "argon cloud," and "low flow rate of less than about 1 liter/minute." (Pl. Mem. at 20.) ConMed argues further that application of just two of the elements of the `745 patent, as construed, demonstrate that Erbe's infringement claim is unfounded as a matter of law. These elements are (1) the requirement of a "gas stream" that with a flow rate of less than 1 liter/minute, and a non-laminar flow which creates an inert gas atmosphere, and (2) the use of a continuous high frequency energy supply. (Id.) ConMed argues that because its probe operates by use of higher flow rates and a laminar stream, as well as by use of a low energy or pulsed HF signal, it does not infringe Erbe's patent. (Id.)
As might be expected, Erbe disputes ConMed's characterization of the patent history. According to Erbe, ConMed has misconstrued Erbe's remarks and based its motion on a "skewed reading of the specifications and file history of the `745 patent[.]" (Defendants' Memorandum of Law in Opposition to Plaintiffs' Motion for Partial Summary Judgment and Defendants' Cross-Motion for Summary Judgment at 19 (hereinafter "Def. Mem. at ___.").) Erbe argues that ConMed's attempt to limit the claims of the `745 patent to flow rates of less than 1 liter per minute and to only employ a continuous HF energy signal is misplaced and relies on an erroneous view of the record.
According to Erbe, ConMed's proposed construction is contradicted by the plain language of the claims themselves. (Def. Mem. at 20.) Erbe argues that "Independent claim 1 recites a `low flow rate of less than about 1 liter/minute'," and that "this language means less than 1 liter/minute and about 1 liter/minute, not `less than 1 liter/minute' as suggested by ConMed." (Id.) Erbe argues that the proper construction of the patent terms requires only a "non-laminar stream of inert gas" — without the additional limitations urged by ConMed. (Def. Mem. at 21.)
With regard to the claimed limitation on the energy signal, Erbe argues that this limitation is based upon ConMed's misinterpretation of Erbe's analysis of the Morrison Jr. patent. Erbe argued before the patent examiner that the device in Morrison Jr. "had such a slow flow rate that a continuous HF electrical signal can not be applied," and that, accordingly, only a lower energy signal or pulsed HF signal could be applied. (Def. Mem. at 22.) Erbe argues that ConMed's attempt to read this as a limitation on Erbe's patent ignores the plain meaning of Erbe's argument. Erbe argues that this argument merely distinguished the Morrison Jr. patent from the `745 patent by noting that the Morrison Jr. invention could not support a continuous HF signal, while Erbe's could. Erbe purports to demonstrate the flaws in ConMed's argument through, inter alia, "studying the physics of current flow in an ionized inert gas". (Id.) Erbe argues that ConMed's purported limitation is "contradicted by the plain meaning of the applicant's arguments and the fundamental physics of argon plasma." (Id. at 23.)
Upon a review of the express language of the `745 patent, the patent history, the supporting affidavits and exhibits thereto, it is held that ConMed's construction of the `745 patent, as limited by Erbe's representations and arguments before the patent examiner, is correct. It is clear that the patent examiner rejected the initial CIP application as undistinguished from the prior art, based on a construction substantially the same as that now urged by Erbe. It is also clear that the patent examiner only approved the `745 patent after Erbe's representations that differentiated its device from Canady, Morrison Jr., and Manwaring.
As noted above, the patent examiner initially rejected
the `745 application because it would have been
obvious to one of ordinary skill in the art to have
provided the Manwaring endoscopic coagulator with an
inert gas, such as argon, as the conductive fluid,
particularly in view of the teaching of Canady. It
would have been further obvious to have provided the
Manwaring device, as modified by the teaching of
Canady, with a very low flow rate of the inert gas to
provide a non-laminar flow pattern to blanket the
treatment tissue in view of the teaching of Morrison,
Jr [sic] et al.
(Muldoon Decl. Exh. 7 at 6.) It was only after Erbe further limited its CIP application as described by ConMed that the patent examiner approved the `745 patent.
Specifically, Erbe limited its invention to a probe that "avoids the production of laminar jets of ionized gas directed on the tissue" through the use of flow rates lower than those taught in Canady (i.e., flow rates from 1 to 12 liters/minute) and flow velocities lower than those resulting from the flow rates in Canady (i.e., flow velocities less than 19 km/hour), and which, contrary to the invention in Morrison Jr., operated with "a continuous high frequency energy supply." (Muldoon Decl. Exh. 8 at 10-11.) Because it is held that Erbe so limited its application before the patent examiner, the issue becomes whether or not ConMed's probe infringes the `745 patent as so construed.
2. Inducement to Infringe and Contributory Infringement By ConMed
Erbe has argued that ConMed is liable to it on theories of inducement to infringe and contributory infringement. 35 U.S.C. § 271 provides, in relevant part, as follows:
(a) Except as otherwise provided in this title,
whoever without authority makes, uses, offers to
sell, or sells any patented invention, within the
United States or imports into the United States any
patented invention during the term of the patent
therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent
shall be liable as an infringer.