United States Court of Appeals
for the Federal Circuit
__________________________
CORDIS CORPORATION,
Plaintiff-Appellant,
v.
BOSTON SCIENTIFIC CORPORATION
ANDBOSTON SCIENTIFIC SCIMED, INC.
(FORMERLY KNOWN AS SCIMED LIFE SYSTEMS, INC.),
Defendants-Cross Appellants.
__________________________
2010-1311, -1316
__________________________
Appeals from the United States District Court for the
District of Delaware in case no. 98-CV-0197, Judge Sue L.
Robinson.
___________________________
Decided: September 28, 2011
___________________________
GREGORY L. DISKANT, Patterson Belknap Webb & Ty-
ler LLP, of New York, New York, argued for plaintiff-
appellant. With him on the brief were EUGENE M.
GELERNTER, SCOTT B. HOWARD, IRENA ROYZMAN, CHARLES
D. HOFFMANN.
FRANK P. PORCELLI, Fish & Richardson P.C., of Bos-
ton, Massachusetts, argued for defendants-cross appel-
CORDIS CORP v. BOSTON SCIENTIFIC 2
lants. With him on the brief were LAUREN A. DEGNAN and
CHERYLYN ESOY MIZZO, of Washington, DC.
__________________________
Before BRYSON, MAYER, and GAJARSA ∗ , Circuit Judges.
GAJARSA, Circuit Judge.
Cordis Corporation (“Cordis”) appeals the United
States District Court for the District of Delaware’s grant
of judgment as a matter of law (“JMOL”) that Boston
Scientific Corporation and Boston Scientific Scimed, Inc.
(collectively, “BSC”) do not literally infringe claim 25 of
U.S. Patent No. 5,879,370. Cordis also appeals the dis-
trict court’s denial of JMOL on the issue of non-
infringement by the reverse doctrine of equivalents. BSC
cross-appeals the district court’s judgment that U.S.
Patent Nos. 5,643,312 (the “’312 patent”) and 5,879,370
(the “’370 patent”) are not unenforceable due to inequita-
ble conduct. For the reasons stated below, we affirm.
BACKGROUND
This dispute relates to balloon-expandable stents, de-
vices which are used to treat occluded blood vessels. We
have previously summarized the importance of such
stents:
The development of balloon-expandable coronary
stents marked a significant advance in the treat-
ment of coronary artery disease by providing an
alternative to balloon angioplasty and bypass sur-
gery. 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 The balloon is withdrawn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
∗
Circuit Judge Gajarsa assumed senior status
on July 31, 2011.
3 CORDIS CORP v. BOSTON SCIENTIFIC
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 bal-
loon is inflated. When the balloon is deflated and
withdrawn, the stent retains its shape and re-
mains in the artery to keep it open.
Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1354-
55 (Fed. Cir. 2003). Both of the patents at issue are
directed to, inter alia, stents having undulating longitu-
dinal sections.
On February 25, 1994, Robert E. Fischell and two of
his sons, David R. Fischell and Tim A. Fischell, filed U.S.
Patent Application No. 08/202,128 (the “’128 application”),
which ultimately issued as the ’312 patent. For the first
two years after the ’128 application was filed, Robert
Fischell prosecuted the application pro se. He did, how-
ever, retain an attorney, Morton J. Rosenberg, to prose-
cute foreign counterparts. 1
On July 17, 1995, Mr. Rosenberg forwarded to Robert
Fischell a “Search Report from the European Patent
Office” (“EPO Search Report”) regarding a European
counterpart to the ’128 application. The EPO Search
Report identified six references, and categorized them
according to relevance. Category “X” documents were
“particularly relevant if taken alone,” category “Y” docu-
ments were “particularly relevant if combined with an-
other document of the same category,” and category “A”
documents were “technological background.” J.A. 11523.
Only one reference, European Patent Application 566807
1 At the time the ’128 application was filed, Robert
Fischell had personally prosecuted more than twenty
patents. Mr. Rosenberg was substituted as the attorney
prosecuting the ’128 application in February 1996.
CORDIS CORP v. BOSTON SCIENTIFIC 4
(“Sgro”), was identified as a category X reference. In an
accompanying letter, Mr. Rosenberg explained:
the only reference which is stated as being par-
ticularly relevant to Claim 1 is European Patent
Application # 566807 whose inventor is Jean-
Claude Sgro. We have made a Patentee Search to
determine whether we have any corresponding
Patent in the United States but have come up
negatively. It may pay us to make a translation
from the French to determine if this is relevant.
J.A. 11946.
As in the original ’128 application, the only claim in
the European application that mentioned undulating
longitudinals was claim 8. The EPO Search Report
identified four “Y” references as being relevant to that
claim. Among the references so identified was U.S. Pat-
ent No. 4,856,516 (“Hillstead”), a patent directed to, inter
alia,
[a] stent for reinforcing a vessel within a subject
comprising a cylindrical support dimensioned to
fit within an interior of said vessel constructed
from an elongated wire bent to define a series of
relatively tightly spaced convolutions or bends,
said wire also bent in the form of a plurality of
loops . . . .
Hillstead, col.4 ll.37-42 (emphasis added). Figure 2A from
Hillstead, also displayed on the cover page of that patent,
is reproduced below, along with Figure 8 from the ’312
patent for comparison.
5 CORDIS CORP v. BOSTON SCIENTIFIC
In the course of this case, Mr. Rosenberg testified it
was his practice to “carefully” review the “X” references in
EPO search reports, i.e., those that—like Sgro—are
“particularly relevant if taken alone.” Cordis Corp. v.
Boston Scientific Corp., 641 F. Supp. 2d 353, 355-56 (D.
Del. 2009) (“Cordis III”). But his practice was to “just
scan” “Y” references, i.e., those that—like Hillstead—are
“particularly relevant if combined with another document
of the same category.” Id. Similarly, Robert Fischell
testified it was his practice to “look at the pictures and see
if the pictures [in the references] look like the invention,
the inventive concept for which we’re trying to get
claims.” Bench Trial Tr. 846:1-17; see also Bench Trial Tr.
CORDIS CORP v. BOSTON SCIENTIFIC 6
845:10-16, 852:7-24. Nevertheless, both Mr. Rosenberg
and Robert Fischell testified that they did not recall
looking at Hillstead until April 1998, even though it was
identified in the EPO Search Report and both had
retained copies of Hillstead in their files since at least
July 1995. Not surprisingly, Hillstead was never
disclosed to the U.S. Patent and Trademark Office in the
course of the ’312 patent’s prosecution, despite multiple
amendments adding limitations regarding undulations
and the importance given those undulations in
distinguishing various prior art references. 2
Just prior to the July 1, 1997, issuance of the ’312
patent, the Fischells filed U.S. Patent Application
08/864,221 (“the ’221 application”) as a continuation of the
’128 application. Robert Fischell was thereafter shown a
copy of Hillstead during a meeting with Cordis’s counsel. 3
Robert Fischell testified that this meeting—apparently in
April 1998—was the first time he specifically recalled
seeing Hillstead.
In May 1998, an information disclosure statement
(“IDS”) regarding the ’221 application was filed with the
Patent and Trademark Office. The IDS cited forty-one
U.S. patents, seven foreign patent documents, and
thirteen articles. Hillstead, along with the other three “Y”
2 Of relevance here, the Fichells specifically
distinguished U.S. Patent No. 5,269,802 (“Garber”) as
lacking “the undulating shape or contour” in the
longitudinals of their own claimed invention. J.A. 254-55.
The Fischells similarly distinguished other references as
not providing “the undulating sections of each
longitudinal structure being of a generally curved shape.”
J.A. 235-36.
3 Through a series of transactions in 1998 and
1999, Cordis acquired various assets of the Fischells’
company, IsoStent, and agreed to assume certain of
IsoStent’s obligations to the Fischells.
7 CORDIS CORP v. BOSTON SCIENTIFIC
references from the EPO Search Report, was included in
the disclosure. Among the seventy references ultimately
identified, Hillstead was never emphasized as being of
particular interest. The ’221 application subsequently
issued as the ’370 patent, with Hillstead among the
“References Cited” on the face of the patent.
The present litigation began on October 3, 1997, when
Cordis filed suit against Medtronic AVE, Inc., BSC, and
Scimed Life Systems, Inc. As relevant to this appeal,
Cordis ultimately accused BSC’s NIR stent of infringing
the ’312 and ’370 patents. Following a multi-week trial, a
jury found that BSC’s NIR stent does not literally infinge
claim 21 of the ’312 patent, and claim 21 is not invalid for
obviousness or lack of written description. Cordis Corp. v.
Medtronic AVE, Inc., 194 F. Supp. 2d 323, 339 (D. Del.
2002) (“Cordis I”). It also found that the NIR stent
literally infringes claims 25 and 26 of the ’370 patent, but
no infringement of either claim by virtue of the reverse
doctrine of equivalents. Id. Moreover, it determined that
claim 25 of the ’370 patent is not invalid for lack of
written description, but claim 26 of the ’370 patent is
invalid for lack of written description. Id.
Both parties moved for JMOL. The district court
granted BSC’s motion for JMOL that the NIR stent does
not literally infringe claims 25 and 26 of the ’370 patent.
Id. at 354. Consequently, Cordis’s motion for JMOL on
the reverse doctrine of equivalents was denied as moot.
Id. BSC’s motion for JMOL that claim 25 of the ’370
patent and claim 21 of the ’312 patent are invalid for lack
of written description was also denied. Id. at 354-55.
Following the jury trial, the district court conducted a
four-day bench trial on the issue of unenforceability due
to inequitable conduct. BSC contended that the patentees
failed to disclose Hillstead during the prosecution of the
CORDIS CORP v. BOSTON SCIENTIFIC 8
’312 patent, and the patentees knew, or should have
known, that Hillstead would be material to the
examiner’s consideration of patentability. Id. at 362.
After making findings of fact, the district court concluded
BSC proved “by clear and convincing evidence the
threshold levels of materiality and intent with respect to
nondisclosure of the Hillstead patent” during the
prosecution of the ’312 patent. Id. at 367. The court
found “[t]he patentees purposefully neglected their
responsibility of candor to the PTO by ‘putting their heads
in the sand’ regarding prior art related to [undulating
longitudinals].” Id. The court then concluded that the
’370 patent’s prosecution was tainted by the lack of
candor in the ’312 prosecution because, when the
patentees finally disclosed Hillstead, they did so in the
midst of numerous other references and without
identifying it as being of particular interest. Id. at 368.
The district court therefore held both patents
unenforceable due to inequitable conduct. Id.
Both parties appealed. Cordis challenged the portions
of the judgment relating to literal infringement, the
reverse doctrine of equivalents, and unenforceability, all
with respect to the ’370 patent. Cordis Corp. v. Boston
Scientific Corp., 188 F. App’x. 984, 985 (Fed. Cir. 2006)
(“Cordis II”). On the issue of unenforceability, this court
agreed that the Hillstead reference was material, but
remanded for additional findings regarding intent to
deceive. Id. at 986. We therefore declined to reach the
issues of literal infringement and reverse doctrine of
equivalents. Id. at 985. BSC cross-appealed from the
portion of the judgment holding the ’370 patent not
invalid, but we affirmed the district court on that issue.
Id.
On remand, the district court made additional
findings, but concluded “[u]pon further reflection, the
9 CORDIS CORP v. BOSTON SCIENTIFIC
evidence of record that tends to support a finding of
deceptive intent is not clear and convincing.” Cordis III,
641 F. Supp. 2d at 358. Because it found “the inferences
argued by [Cordis] are supported by evidence of record
and are as reasonable as those inferences argued by
[BSC],” the district court concluded “it would be clear
error . . . to imbue [Fischell’s and Rosenberg’s] conduct
with deceptive intent . . . .” Id. at 359. The court went on
to note that, even had it concluded otherwise, BSC “failed
to prove, by clear and convincing evidence, that the
nondisclosure of Hillstead during the ’312 prosecution
carried over and affected the later ’370 patent
prosecution” so as to taint the latter. Id. In short, neither
patent was unenforceable by reason of inequitable
conduct. Following the district court’s denial of BSC’s
motion for reconsideration, Cordis Corp. v. Boston
Scientific Corp., No. 98-197, 2010 WL 1286424 (D. Del.
Mar. 31, 2010) (“Cordis IV”), the parties renewed their
remaining arguments on appeal. 4
4 Returning to this court for a second time, this case
is but one installment—albeit, at nearly fourteen years,
perhaps the longest—in an ongoing and epically expen-
sive litigation saga known as the “Stent Wars.” E.g.,
Barnaby J. Federer, Keeping Arteries Cleared and the
Courts Clogged, N.Y. TIMES, Oct. 4, 2007, at C1; see also
Spectralytics, Inc. v. Cordis Corp., --- F.3d ---, 2011 WL
2307402 (Fed. Cir. June 13, 2011); Boston Scientific Corp.
v. Johnson & Johnson, 647 F.3d 1353 (Fed. Cir. 2011);
Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319
(Fed. Cir. 2009); Boston Scientific Scimed, Inc. v. Cordis
Corp., 554 F.3d 982 (Fed. Cir. 2009); Cordis Corp. v.
Medtronic AVE, Inc., 511 F.3d 1157 (Fed. Cir. 2008);
Advanced Cardiovascular Sys., Inc. v. Medtronic Vascu-
lar, Inc., 182 F. App’x. 994 (Fed. Cir. 2006); Cordis Corp.
v. Boston Scientific Corp., 99 F. App’x. 928 (Fed. Cir.
2004); Scimed Life Sys., Inc. v. Johnson & Johnson, 87 F.
App’x. 729 (Fed. Cir. 2004); Cordis Corp. v. Medtronic
CORDIS CORP v. BOSTON SCIENTIFIC 10
DISCUSSION
I.
We turn first to the issue of infringement. The in-
fringement analysis is a two step inquiry. “First, the
court determines the scope and meaning of the patent
claims asserted, and then the properly construed claims
are compared to the allegedly infringing device.” Cybor
Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir.
1998) (en banc) (internal citations omitted).
On appeal, only dependent claim 25 of the ’370 patent
is at issue with respect to JMOL of no infringement. That
claim, along with independent claim 22 on which it de-
pends, reads:
22. A pre-deployment balloon expandable stent
structure adapted for percutaneous delivery to the
curved coronary arteries, the stent structure being
generally in the form of a thin-walled metal tube
having a longitudinal axis, the stent structure
having a multiplicity of closed perimeter cells,
each cell having one or more undulating sections,
each undulating section having a generally curved
shape and having a first end point and a second
end point wherein a line drawn from the first end
point to the second end point is generally parallel
to the stent’s longitudinal axis.
25. The stent of claim 22 wherein the undulating
section of each closed perimeter cell comprises a
“U” shaped curve.
AVE, Inc., 339 F.3d 1352 (Fed. Cir. 2003); Advanced
Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261
F.3d 1329 (Fed. Cir. 2001); Medtronic, Inc. v. Advanced
Cardiovascular Sys., Inc., 248 F.3d 1303 (Fed. Cir. 2001).
11 CORDIS CORP v. BOSTON SCIENTIFIC
’370 patent col.6 ll.17-26, 35-36 (emphasis added).
During claim construction, the parties disputed
whether the term “undulating” required both a crest and
a trough, as opposed to a crest or a trough. Cordis I, 194
F. Supp. 2d at 353 n.22. Citing claim 25, Cordis argued
that “undulating structures include those that have [only]
a wave-like crest, and are not limited to structures that
have both a crest and an associated trough.” J.A. 954,
1206. BSC, on the other hand, explicitly argued that
“undulating” cannot simply mean “curved,” J.A. 1261, and
instead “requires that a structure have both a ‘crest’ and a
‘trough,’” J.A. 1269. The district court embraced BSC’s
proposed construction and construed “undulating” to
mean “rising and falling in waves, thus having at least a
crest and a trough.” Cordis Corp. v. Boston Scientific
Corp., No. 1:98-cv-197, Order at 2 (DE 154) (D. Del. Sept.
7, 2000).
As noted above, BSC moved for JMOL that the NIR
stent does not literally infringe claim 25 of the ’370 pat-
ent. Jury Trial Tr. 1576:2-1577:7. When the motion was
subsequently renewed, BSC argued that “Cordis inappro-
priately altered the parties’ and the court’s understanding
of the term ‘undulating’ and, under the intended construc-
tion of the term, the evidence presented at trial does not
support a conclusion that the NIR stent contains ‘undulat-
ing’ sections.” Cordis I, 194 F. Supp. 2d. at 353. Agreeing
with BSC, the district court clarified that its “use of the
plural ‘waves’ implies a change in direction,” and entered
JMOL that claim 25 was not infringed. Id. at 354. Cordis
challenges the district court’s grant of JMOL on two
grounds. First, Cordis argues that BSC improperly urged
a narrower and erroneous claim construction on the
district court. And second, even if the district court’s
claim construction did imply “arcing curves” and “a
change in direction,” Cordis argues that a reasonable jury
CORDIS CORP v. BOSTON SCIENTIFIC 12
could still find that the NIR stent infringed claim 25. We
treat each of Cordis’s arguments sequentially.
A.
Cordis correctly notes that a party prevailing on an
issue of claim construction cannot argue for a differing
claim construction following an adverse jury verdict. E.g.,
Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d
1314, 1320 (Fed. Cir. 2003) (citing Interactive Gift Ex-
press, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1345-46
(Fed. Cir. 2001)). The question here is whether BSC did,
in fact, seek to alter the district court’s claim construction.
No rule of law restricted BSC from seeking to clarify or
defend the original scope of its claim construction. Inter-
active Gift Express, 256 F.3d at 1346. Similarly, nothing
prevented the district court from clarifying its previous
construction of the term “undulating.” See Network
Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1358
n.4 (Fed. Cir. 2005). But because BSC did not object to
the court’s jury instruction regarding the construction of
the term “undulating,” “[t]he verdict must be tested by the
charge actually given [under] the ordinary meaning of the
language of the jury instruction,” Hewlett-Packard, 340
F.3d at 1321.
Cordis does not challenge the district court’s construc-
tion of the term “undulating” as requiring “at least a crest
and a trough.” We therefore do not review the construc-
tion itself, and instead focus on what that construction
means. Based on the ordinary meaning of the construc-
tion as given to the jury, it is apparent that the construc-
tion requires multiple “waves.” See Webster's Third New
International Dictionary 2586 (1968) (defining “wave” as
“a shape or outline having successive curves like those of
ocean waves: one of the crests of such a form or a crest
with its adjacent trough”). Accordingly, the terms “crest”
13 CORDIS CORP v. BOSTON SCIENTIFIC
and “trough,” as used in district court’s claim construc-
tion, implicate changes of direction, with the curve ex-
tending beyond the point of inflection. The district court’s
post-verdict elaboration on this point only clarified what
was inherent in the construction. Doing so was not error;
it merely made plain what, as we detail below, should
have been obvious to the jury.
We acknowledge that the terms “crest” and “trough”
can, in some cases, merely indicate points on a curve.
Here, however, we are not persuaded by Cordis’s citation
to expert testimony and portions of dictionary entries
defining a “crest” as, inter alia, “the top” or “highest point
of the waveform.” So defined, the requirement in the
construction for “both a ‘crest’ and a ‘trough’” becomes
meaningless: every trough would necessarily include a
“highest point” that would satisfy Cordis’s definition of
“crest.” Indeed, Cordis’s expert testified as much:
Q. So does every letter U shape have two crests?
A. Well, I haven’t looked at every. I mean, some
people’s handwriting is illegible and certainly
doesn’t, but, yes.
Jury Trial Tr. 989:20-23. Cordis’s definition would thus
impermissibly render superfluous the requirement for a
“crest” in addition to a “trough.”
Our conclusion about the ordinary meaning of the
jury instruction is bolstered by the parties’ arguments
during claim construction. Accordingly, this is not a case
where Cordis can plead surprise at the trial court’s clarifi-
cation. Indeed, during the Markman phase, BSC raised
claim construction arguments from which the district
court’s understanding logically flows and which, indeed,
mandate it. BSC specifically pointed to arguments made
during the prosecution of the ’128 application in which the
CORDIS CORP v. BOSTON SCIENTIFIC 14
Fischells’ “undulating” structure was distinguished from
structures that were merely curved. 5 Cordis Corp. v.
Boston Scientific Corp., No. 1:98-cv-197, BSC Reply Br. in
Support of Defendant’s Markman Memorandum at 4-8
(DE 133); see also Markman Hr’g Tr. 37:23-39:19.
Claim terms must be construed in light of all of the
intrinsic evidence, which includes not only the claim
language and patent written description, but also the
prosecution history. ERBE Elektromedizin GmbH v.
Canady Tech. LLC, 629 F.3d 1279, 1284-85 (Fed. Cir.
2010). As noted by BSC, the Fischells traversed an an-
ticipation rejection over U.S. Patent No. 5,269,802 (“Gar-
ber”), 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. J.A. 255. Although the Fischells referred to
the “connecting arms” in Garber as “substantially linearly
directed,” J.A. 255, a cursory review of that patent shows
the structures at issue have an obvious and defined curve,
Garber Figs. 2, 3. Indeed, the Garber specification notes
that “[i]n use, the pressure of the bladder neck against the
branching [connecting] arms tends to arc the arms in-
ward” resulting in “an hour glass shape.” Garber col.4
ll.5-7, col.5 ll.30-31. Cordis’s suggestion that a single
curve can satisfy the “undulating” limitation of the as-
serted claims was thereby foreclosed. See Elkay Mfg. Co.
v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999) (not-
5 The argument in question was made in the course
of the ’128 application, which resulted in the ’312 patent,
while only the claims of the ’370 patent are at issue in
this portion of the appeal. Arguments made in the course
of prosecuting the ‘128 application are relevant, however,
because a disclaimer in the parent application carries
forward into the construction of the same claim term in
the child. Verizon Servs. Corp. v. Vonage Holdings Corp.,
503 F.3d 1295, 1306 (Fed. Cir. 2007).
15 CORDIS CORP v. BOSTON SCIENTIFIC
ing that “[a]rguments made during the prosecution of a
patent application are given the same weight as claim
amendments”). That remains true whether Cordis
couches its argument in terms of claim differentiation, the
phrase “comprising a ‘U’ shaped curve,” or dictionary
entries. See, e.g., Free Motion Fitness, Inc. v. Cybex Int’l,
Inc., 423 F.3d 1343, 1348-49 (Fed. Cir. 2005); Seachange
Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1372-73 (Fed.
Cir. 2005); Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d
1362, 1368 (Fed. Cir. 2000).
B.
Having found no error in the district court’s clarifica-
tion of its construction of the term “undulating,” we turn
to the merits of its grant of JMOL that claim 25 was not
infringed by BSC’s NIR stent. “This court reviews with-
out deference a district court’s grant of JMOL under
Federal Rule of Civil Procedure 50.” LNP Eng’g Plastics,
Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1353 (Fed.
Cir. 2001). JMOL is appropriate when “a party has been
fully heard on an issue during a jury trial and the court
finds that a reasonable jury would not have a legally
sufficient evidentiary basis to find for the party on that
issue . . . .” Fed. R. Civ. P. 50(a)(1). In determining
whether a reasonable jury would have a legally sufficient
evidentiary basis for the facts as found, “we must pre-
sume that the jury resolved all factual disputes in favor of
the prevailing party, and we must leave those findings
undisturbed as long as they are supported by substantial
evidence.” Akamai Techs., Inc. v. Cable & Wireless Inter-
net Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003).
Substantial evidence requires more than a mere scintilla,
however, and we must review the record as a whole,
taking into consideration evidence that both justifies and
detracts from the jury’s decision. Id.; see also Johnson v.
Campbell, 332 F.3d 199, 204 (3d Cir. 2003) (“The question
CORDIS CORP v. BOSTON SCIENTIFIC 16
is not whether there is literally no evidence supporting the
unsuccessful party, but whether there is evidence upon
which a reasonable jury could properly have found its
verdict.” (internal quotations omitted)).
As did the district court, we focus on whether the NIR
stent satisfies the “undulating sections” limitation of
claim 25. Cordis identifies three categories of evidence
supporting the jury verdict: the testimony of its expert,
various photographs, and engineering drawings. Cordis
Br. 48-50. BSC correctly argues that we must disregard
the testimony of Cordis’s expert that the NIR stent has
two crests and a trough because, as the quotation in Part
II-A indicates, that testimony was based on an incorrect
understanding of the claim construction. See Frank’s
Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd., 292
F.3d 1363, 1375 (Fed. Cir. 2002) (finding no evidence that
a limitation was satisfied after noting that contrary
testimony was based on an incorrect interpretation of a
claim term).
Referencing the drawing below, copied from Cordis’s
brief and extensively relied on by both parties, the NIR
stent includes so-called C-loops stacked circumferentially
about the stent body, with longitudinal members known
as U-loops in between.
17 CORDIS CORP v. BOSTON SCIENTIFIC
Cordis Br. 11; see also Jury Trial Tr. 1510:10-24. The
drawing leaves unclear where the U-loops end and the C-
loops begin. See Points A, B, and C, as labeled by this
court. The photographs and engineering drawings in
evidence are, however, more clear. In those renderings, if
the width of the C-loops is treated as approximately
constant, with the C-loops maintaining the same curva-
ture as they display before the junction with the U-loops,
the geometry resembles points B and C, rather than point
A. See, e.g., J.A. 12500-530. The U-loops thus merely
level out, and they lack the change in direction required
for literal infringement. We note that our conclusion is
consistent with the testimony of Cordis’s expert that the
“[u]ndulating [section] is fitted onto the end of the ring,”
i.e., the C-loops, and is “[a] cup, a claw on the end of the . .
. ring element.” Jury Trial Tr. 986:21-987:18; see also
Cordis Br. 48-49. It is also consistent with the testimony
of BSC’s expert that the U-loops include a trough, but no
crest as that term was used in the claim construction. See
Jury Trial Tr. 1625:7-21. It is not, however, consistent
with the jury’s verdict on literal infringement.
Indeed, absent the testimony of Cordis’s expert re-
garding troughs and crests, and the corresponding testi-
mony concluding infringement, we find very little
CORDIS CORP v. BOSTON SCIENTIFIC 18
evidence to support the jury’s verdict that claim 25 was
literally infringed. Substantial evidence, as required to
support the jury’s verdict, demands more than a mere
scintilla. Johnson, 332 F.3d at 204. We therefore affirm
the district court’s grant of JMOL that claim 25 was not
literally infringed. Consequently, we decline to reach the
denial of Cordis’s motion for JMOL on the issue of non-
infringement by the reverse doctrine of equivalents.
II.
We turn next to BSC’s cross-appeal of the district
court’s judgment that the ’312 and ’370 patents are not
unenforceable due to inequitable conduct. BSC first
argues that the enforceability of the ’312 patent is not
properly before this court and, regardless, the trial court
violated our mandate in Cordis II by revisiting the issue
of unenforceability vel non. BSC also argues that the trial
court’s findings in Cordis III are, on the merits, clearly
erroneous. We address each in turn.
A.
In its Corrected Reply Brief in Cordis II, Cordis stated
that “the ’312 patent is not being asserted by Cordis and
its enforceability is not the subject of this appeal. This
appeal concerns a different and separate patent — the
’370 patent.” Cordis Cordis II Corrected Reply Br. 1. BSC
correctly suggests that this statement constitutes a
waiver by Cordis of any challenge to the district court’s
finding in Cordis I that the ’312 patent is unenforceable.
BSC Br. 47-48. BSC errs, however, in concluding that the
waiver rendered the associated judgment unreviewable.
This court properly reaches “waived” issues when they
are necessary to the resolution of other issues directly
before it on appeal. See Pfizer, Inc. v. Teva Pharms. USA,
Inc., 518 F.3d 1353, 1359 n.5 (Fed. Cir. 2008); Long Island
19 CORDIS CORP v. BOSTON SCIENTIFIC
Sav. Bank, FSB v. United States, 503 F.3d 1234, 1244-45
(Fed. Cir. 2007); see also U.S. Supreme Ct. Rule 14.1(a)
(“The statement of any question presented is deemed to
comprise every subsidiary question fairly included
therein.”). Applied here, we conclude that the enforceabil-
ity of the ’312 patent was necessarily before this court in
Cordis II.
In our previous opinion, we characterized Cordis as
“challeng[ing] the district court’s conclusion that the
patentees engaged in inequitable conduct during the
prosecution of [the ’312 patent] that rendered the ’370
patent unenforceable.” Cordis II, 188 F. App’x. at 985.
Consistent with that characterization, both parties ad-
dressed the issues of materiality and intent to deceive,
but they did so only with respect to the ’312 patent prose-
cution. Cordis Cordis II Br. 53-66; BSC Cordis II Br. 23-
39. To be sure, the parties also addressed potential taint
of the ’370 patent prosecution, but only subsequent to far
more extensive arguments regarding the conduct of the
’312 prosecution. Cordis Cordis II Br. 67-69; BSC Cordis
II Br. 39-43. Moreover, neither party has suggested that
the ’370 patent is unenforceable independent of the en-
forceability of its parent. We therefore regard the en-
forceability of the two patents as inextricably linked, with
the enforceability of the ’312 patent a predicate issue
necessary to our determination of the enforceability of the
’370 patent. See Therasense, Inc. v. Becton, Dickinson &
Co., --- F.3d ---, 2011 WL 2028255, at *8 (Fed. Cir. May
25, 2011) (en banc); cf. City of Sherill v. Oneida Indian
Nation of New York, 544 U.S. 197, 214 n.8 (2005) (noting
that the case was resolved “on considerations not dis-
cretely identified in the parties’ briefs” because those
considerations were “inextricably linked to, and thus
fairly included within, the questions presented” (internal
quotation omitted)).
CORDIS CORP v. BOSTON SCIENTIFIC 20
B.
BSC next argues that the district court violated our
mandate in Cordis II by reconsidering its finding of intent
to deceive. Our review of the district court’s actions
implicates the scope and interpretation of our mandate,
which we review without deference. See Engel Indus.,
Inc. v. Lockformer Co., 166 F.3d 1379, 1382 (Fed. Cir.
1999).
In Cordis II, we stated that “[i]t is unclear to us pre-
cisely what the district court has found with regard to
[Robert] Fischell’s and Mr. Rosenberg’s knowledge. In
particular, we are uncertain whether the district court
faulted [Robert] Fischell for merely failing to conduct a
prior art search, or whether the district court faulted
[him] for ‘cultivating ignorance’ with respect to the Hill-
stead reference.” 188 F. App’x. at 988 (quoting FMC
Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 (Fed.
Cir. 1987)). We therefore remanded “for the purpose of
enabling the district court to provide more specific find-
ings as to the state of knowledge of [Robert] Fischell and
Mr. Rosenberg.” Id. In doing so, we instructed the dis-
trict court to address “whether, in addition to reading the
July 1995 letter from Mr. Rosenberg, [Robert] Fischell
read the accompanying search report . . . and whether
[Robert] Fischell read the Hillstead patent at that time.”
Id.
On remand, the district court made detailed findings
regarding the prosecution of the ’312 patent. Cordis III,
641 F. Supp. 2d. at 355-57. It did not, however, make the
requested findings as to Robert Fischell’s actions and
knowledge with respect to the search report and the
Hillstead patent. Instead, the district court reversed its
prior finding of specific intent to deceive, concluding that
“the inferences argued by plaintiff are supported by
21 CORDIS CORP v. BOSTON SCIENTIFIC
evidence of record and are as reasonable as those infer-
ences argued by defendants,” and “it would be clear error .
. . to imbue [Robert Fischell’s and Mr. Rosenberg’s] con-
duct with deceptive intent on this record.” Id. at 359
(referencing Scanner Techs. Corp. v. ICOS Vision Sys.
Corp., 528 F.3d 1365, 1376 (Fed. Cir. 2008)).
We find no error in the district court’s actions. Im-
plicit in our request for additional findings was a conclu-
sion that the findings before us were lacking. Rather
than reversing the district court’s judgment, we requested
specific findings on issues that we identified as outcome
determinative. The district court’s subsequent conclusion
that the record was insufficient to make the requested
findings was entirely consistent with our mandate. For
the same reason, our mandate must be read to have left
unenforceability vel non an open issue. It would be illogi-
cal for this court to remand for findings on unresolved
outcome determinative issues, while simultaneously
foreclosing reconsideration of the outcome after the dis-
trict court considered those issues for the first time.
C.
Finally, BSC directly challenges the district court’s
supplemental findings of fact and the resulting determi-
nation that the ’312 and ’370 patents are not unenforce-
able. BSC Br. 53-59. On appeal, “[w]e review the district
court’s findings of fact for clear error and [its] ultimate
determination of whether inequitable conduct occurred for
abuse of discretion.” Warner-Lambert Co. v. Teva
Pharms. USA, Inc., 418 F.3d 1326, 1343 (Fed. Cir. 2005).
In Therasense, Inc. v. Becton, Dickinson & Co., we
made clear that a finding of inequitable conduct requires
specific intent to deceive, and “to meet the clear and
convincing evidence standard, the specific intent to de-
ceive must be ‘the single most reasonable inference able to
CORDIS CORP v. BOSTON SCIENTIFIC 22
be drawn from the evidence.’” 2011 WL 2028255, at *10
(quoting Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
537 F.3d 1357, 1366 (Fed. Cir. 2008)). In light of this
standard, we cannot agree that the district court’s sup-
plemental findings were clearly erroneous or that its
ultimate determination on inequitable conduct was an
abuse of discretion.
The record reflects that in July 1995, Robert Fischell’s
attorney forwarded him a copy of an EPO Search Report
identifying Hillstead, as well as a copy of the Hillstead
patent. The accompanying letter, however, drew atten-
tion to a different reference—Sgro—as the “only reference
. . . being particularly relevant.” J.A. 11946. Robert
Fischell consistently testified that, while he looked at the
Sgro reference in 1995, he did not recall reviewing Hill-
stead until after the ’312 patent had issued. The district
court explicitly found that no communications in the
record called Hillstead to Fischell’s attention until after
the ’312 patent issued, and that Fischell relied on his
attorney’s advice vis-à-vis the EPO Search Report. Nota-
bly, when Hillstead was eventually brought to Fischell’s
attention, he promptly disclosed it to the Patent and
Trademark Office in connection with the ’370 prosecution,
albeit without emphasis.
The district court ultimately concluded that “the evi-
dence cited in support of finding inequitable conduct is
not clearly more compelling than the evidence cited in
support of not finding inequitable conduct.” Cordis III,
641 F. Supp. 2d at 359. On these facts, particularly the
finding with respect to Robert Fischell’s reliance on Mr.
Rosenberg’s advice, id. at 359 n.8, we do not find clear
error in the district court’s conclusion that the evidence
does not unequivocally demonstrate specific intent to
23 CORDIS CORP v. BOSTON SCIENTIFIC
deceive. 6 We therefore affirm the district court’s conclu-
sion that BSC failed to prove inequitable conduct in the
’312 and ’370 patent prosecutions.
CONCLUSION
We affirm the district court’s grant of judgment as a
matter of law that claim 25 of the ‘370 patent is not
literally infringed by the NIR stent. We also affirm the
district court’s conclusion that ’the 312 and ‘370 patents
are not unenforceable due to inequitable conduct. As did
the district court, we decline to reach Cordis’s appeal on
the issue of reverse doctrine of equivalents because that
issue is moot in light of our holding on literal infringe-
ment.
AFFIRMED
No costs.
6 This appears to be a case where BSC proved the
threshold level of intent to deceive, but that proof was
rebutted by Robert Fischell’s good faith explanation. See
Therasense, 2011 WL 2028255, at *10 (quoting Star
Scientific, 537 F.3d at 1368). BSC’s argument therefore
hinges, as it did below, on Robert Fischell’s credibility.
Reviewing the record, we agree that there is substantial
evidence calling into question Robert Fischell’s veracity.
But it was the province of the district court to determine
credibility, and “[t]his court gives great deference to the
district court’s decisions regarding credibility of wit-
nesses.” Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d
1361, 1378-79 (Fed. Cir. 2000); see also Anderson v. Bes-
semer City, 470 U.S. 564, 575 (“[O]nly the trial judge can
be aware of the variations in demeanor and tone of voice
that bear so heavily on the listener’s understanding of
and belief in what is said.”).