The opinion of the court was delivered by: P. Kevin Castel, U.S.D.J.
MEMORANDUM AND ORDER ON POST-VERDICT MOTIONS
Peter Rentrop, M.D., brought this action against the Spectranetics Corporation ("Spectranetics"), alleging that certain of their products infringe his U.S. Patent No. 6,673,064 (the "'064 Patent"), claiming an invention of a type of catheter used to deliver laser energy principally for use in cardiovascular surgery. Spectranetics asserted various defenses to infringement and counterclaimed to correct inventorship of both the '064 Patent and another of Dr. Rentrop's patents, U.S. Patent No. 6,440,125 (the "'125 Patent"). Spectranetics also asserted state-law counterclaims, alleging that Dr. Rentrop converted its property, misappropriated its trade secrets, and breached a confidentiality agreement.
A jury was empanelled on November 27, 2006. On December 8, 2006, the jury returned its verdict that plaintiff had proven that the accused products infringed claim 1 of the '064 Patent, but that the infringement was not willful.*fn1 The jury found that claims 2, 3 and 7 were not infringed.*fn2 The jury also found that the '064 Patent was valid, and that Spectranetics' employees, Messrs. Kevin Taylor and Kenneth Harlan, were not inventors or joint-inventors of the '064 or '125 patents. The jury rejected all of Spectranetics' state-law counterclaims. The jury found that Dr. Rentrop's damages, based on a reasonable royalty, were $500,000. Neither the verdict form nor the jury instructions authorized an award of attorneys' fees. Unprompted, the jury wrote on the verdict form that a sum of up to $150,000, above the $500,000 reasonable royalty, should be awarded to plaintiff to cover costs and legal fees.
After the close of the plaintiff's case, Spectranetics moved for judgment as a matter of law ("JMOL") pursuant to Rule 50(a), Fed. R. Civ. P., on the issues of infringement and willful infringement. The Court denied the motions without prejudice to renewal and both issues were submitted to the jury. (Trial Tr. 980.) Presently before this Court is Spectranetics' timely renewal of its motion for JMOL, pursuant to Rule 50(b), Fed. R. Civ. P., on the issue of infringement. Spectranetics also now moves to amend the verdict on damages to strike the award of legal fees pursuant to Rules 59 and 60, Fed. R. Civ. P., and moves to preclude plaintiff from seeking pre- and post-judgment interest.*fn3
For the reasons stated herein, defendant's motion for JMOL on infringement is denied. The motion to strike the $150,000 award for legal fees is granted. The issue of plaintiff's entitlement to pre- and post-judgment interest, however, is not properly before the Court. Plaintiff has not yet moved for such relief and has indicated an intention to do so within fourteen days of entry of judgment relying upon Rule 54(d)(2)(B), Fed. R. Civ. P. I am denying defendant's motion insofar as it relates to pre- and post-judgment interest without prejudice to its right to oppose plaintiff's proposed motion.
Dr. Rentrop is a cardiovascular interventionalist who attended medical school at the Universities of Freiberg, Munster and Heidelberg in Germany. He completed a residency in internal medicine at Wayne State University Receiving Hospital followed by a second residency in cardiology at the Cleveland Clinic where he learned the skill of coronary angiography. He set up a cardiac catheterization laboratory at an affiliate of the University of Freiberg Hospital. The Chairman of Medicine at Mt. Sinai Hospital in Manhattan had heard of Dr. Rentrop's work and invited him to come to Mt. Sinai which he did in 1980.
Dr. Rentrop had been an innovator in the field of cardiac perforation catheters and infusion catheters and took an interest in excimer laser catheters developed by Spectranetics. Excimer laser catheters are used to perform angioplasty procedures. The catheters are used to deliver laser energy to arterial blockages in order to penetrate the blockages so that other therapy or treatment can be administered to the patient. Spectranetics holds Food and Drug Administration approvals to sell excimer lasers for use in angioplasty and it is the only entity to hold such approvals in the United States. Dr. Rentrop was trained on the Spectranetics laser catheters and started using them in his practice in early 1995.
Dr. Rentrop began consulting with Spectranetics in March 1998 on the development of extremely small diameter catheters, eventually directing a design for a laser catheter with a tip diameter of .9 millimeters. Spectranetics had designed and sold excimer lather catheters with tip diameters in the 1.4 to 2 millimeter range. The design of the smaller catheter had to account for both the need of the catheter to be flexible enough to get around bends in the circulatory system yet have enough stiffness to permit "pushability." Dr. Rentrop conveyed his ideas for the small diameter laser catheter to a Spectranetics employee. Dr. Rentrop refined the invention and eventually guided Spectranetics personnel in the design of drawings and the development of a prototype that Dr. Rentrop tested on animals.
Larger laser catheters were useful in debulking blockages in blood vessels, particularly in larger peripheral vessels outside the coronary arteries. One of the advantages of the small diameter catheters was to focus intense laser energy on a small area of a blockage in order to generate a pilot hole. The creation of the pilot hole permits the widening of a tiny channel in a blockage with a balloon or stent.
Dr. Rentrop and Spectranetics discussed recognition of Dr. Rentrop's work and, when discussions broke down, Dr. Rentrop filed the application which led to the issuance of the '064 Patent. Dr. Rentrop filed his first application with the United States Patent and Trademark Office on January 4, 2000, and filed a continuation application on May 15, 2002. The '064 patent was issued on January 6, 2004.
Prior to trial, this Court held a hearing at the request of the parties for the sole purpose of construing the word "tip" as it appears in claims 1, 8 and 15 of the '064 Patent and claims 1 and 8 of the '125 Patent.
In an infringement action, the court first must determine the scope and meaning of the patent claims. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998). Claim construction presents a question of law to be decided by the Court.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996).
The Court of Appeals for the Federal Circuit had occasion to restate and clarify the standards for claim construction in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Phillips emphasizes that "[i]t is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Id. at 1312 (citations omitted). The "words of a claim 'are generally given their ordinary and customary meaning,'" which"is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1312-13 (citations omitted). "[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. at 1313. The specification may be the "single best guide to the meaning of a disputed term." Id. at 1315 (citation omitted). If it is in evidence, the prosecution history may also have important bearing on the meaning of a claim term, but it may lack the clarity of the specification and, hence, may be less helpful. Id. at 1317.
A court may resort to extrinsic evidence, though it is of less significance and less value to the claim construction process. Id. at 1317. Extrinsic evidence "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Id. (citations omitted).
After hearing the parties and reviewing their evidence, I construed the term "tip" as used in the patent claims to mean "that which serves as the end, cap or point of an object." (See 4/29/2005 Claim Construction Hrg., Tr. 52)
To prevail in a patent infringement suit, the patent owner must prove by a preponderance of the evidence that all elements or limitations of the claims, as construed by the court, are present in the accused device. Cross Medical Prods., Inc. v. Medtronic Somafor Danek, Inc., 424 F.3d 1293, 1311 (Fed. Cir. 2005).
The jury concluded that at least one of the accused devices infringed claim 1 of the '064 Patent.*fn4 The jury did not find infringement as to claims 2, 3 and 7 of the '064 Patent, and, thus, claim 1 is the only claim at issue on this motion. Claim 1 of the '064 Patent reads as follows:
1. An excimer laser catheter, comprising: a catheter shaft containing optical fibers in a concentric arrangement, a tip extending from the catheter shaft and having a diameter that is smaller than that of the catheter shaft, the tip having a length of at least 1 cm and a diameter less than 1 millimeter, each of the optical fibers extending through a full length of the tip and a full length of the catheter shaft, the catheter shaft being configured to be stiffer and less flexible than the tip so as to be pushable to push the tip into a desired site even though the tip negotiates arterial bends to reach the desired site.
Figure 1 of the '064 Patent, appended hereto, [Ed. note: Figure 1 not available] is a drawing representing the tip of the catheter in use in a coronary artery. As the specifications explain: "A catheter contains optical fibers 12 and has a tip 16 that is inserted through the [coronary] vessel 6 to reach the atherosclerotic blockage 8. . . . [L]aser radiation energy emerges from the catheter tip 16 to strike atherosclerotic blockage 8 to ablate the same." (Id., col. 2.)
Figure 2 of the '064 Patent, also appended hereto, [Ed. note: Figure 2 is not available] is a drawing of the entire laser catheter system. It represents the claimed invention together with certain "conventional components" to excimer laser catheters, including "a distal tip 90 preferably made of platinum and an excimer laser 92 (shown in box form)." (Id., col. 4.)
At trial, both plaintiff and defendant offered experts on the subject of infringement. Plaintiff's expert, Edward Sinofsky, has a B.S. in physics from S.U.N.Y. Binghamton and a M.S. and Ph.D. in optical science from the University of Arizona. He holds approximately 50 U.S. patents, a majority in the area of laser catheters or related systems.
In his trial testimony, Dr. Sinofsky walked through the elements of each of the claims, including claim 1, utilizing a claim chart. In the presence of the jury, he demonstrated how the accused catheters (or product catalogue illustrations of the ...