United States Court of Appeals for the Federal Circuit
04-1323, -1487
ARTHROCARE CORPORATION,
Plaintiff/Counterclaim Defendant-Appellee,
and
ETHICON, INC.,
Counterclaim Defendant-Appellee,
v.
SMITH & NEPHEW, INC.,
Defendant/Counterclaimant-Appellant.
Jared Bobrow, Weil, Gotshal & Manges LLP, of Redwood Shores, California,
argued for plaintiff/counterclaim defendant-appellee. With him on the brief were
Matthew D. Powers and Perry R. Clark. Of counsel on the brief were Timothy E.
DeMasi, of New York, New York; and Jack B. Blumenfeld and Karen Jacobs Louden,
Morris, Nichols, Arsht & Tunnell, of Wilmington, Delaware.
George F. Pappas, Venable LLP, of Washington, DC, argued for counterclaim
defendant-appellee. With him on the brief were Vicki Margolis and Rebecca G.
Lombard.
Ruffin B. Cordell, Fish & Richardson P.C., of Washington, DC, argued for
defendant/counterclaimant-appellant. With him on the brief were Lauren A. Degnan and
Tina M. Chappell. Of counsel on the brief were Mark J. Hebert and Thomas M.
Johnston, of Boston, Massachusetts. Of counsel was William J. Marsden, Jr., of
Wilmington, Delaware.
Appealed from: United States District Court for the District of Delaware
Chief Judge Sue L. Robinson
United States Court of Appeals for the Federal Circuit
04-1323, -1487
ARTHROCARE CORPORATION
Plaintiff/Counterclaim Defendant-
Appellee,
and
ETHICON, INC.,
Counterclaim Defendant-Appellee,
v.
SMITH & NEPHEW, INC.,
Defendant/Counterclaimant-Appellant.
___________________________
DECIDED: May 10, 2005
___________________________
Before MAYER, LOURIE, and BRYSON, Circuit Judges.
BRYSON, Circuit Judge.
The term electrosurgery refers to a surgical technique in which high frequency
electrical current is applied to cut or ablate body tissue. There are two forms of
electrosurgical devices, monopolar and bipolar. In monopolar devices, electric current
passes from a single exposed electrode into the body tissue that is to be ablated. The
current then passes through the body to a return electrode, usually attached to the
outside of the patient’s body. In bipolar devices, both electrodes are inserted into the
body. The current passes from one electrode, through the targeted body tissue, and
then back to the return electrode.
Electrosurgery has the benefit of reducing patient bleeding and trauma.
However, there are disadvantages to applying high voltages within the patient’s body,
including the risk that the electrical discharge will cause damage other than to the target
tissue. For that reason, the path of the electrical current through the body needs to be
carefully controlled. Moreover, surgeons prefer to cleanse the surgical area during
arthroscopic procedures with fluids that conduct electricity, such as saline. Therefore,
electrosurgical devices need to be usable in such fluids. The patents at issue in this
case sought to address the problems of controlling the electrical path and enabling
electrosurgical instruments to function in the presence of conductive fluids.
The three patents at issue, U.S. Patent Nos. 5,697,536 (“the ’536 patent”),
5,697,882 (“the ’882 patent”), and 6,224,592 (“the ’592 patent”), are owned by
ArthroCare Corporation. ArthroCare sued Smith & Nephew, Inc., in the United States
District Court for the District of Delaware claiming that Smith & Nephew was liable for
infringement of those patents based on its manufacture of certain electrosurgical probes
and the use of those probes in surgery. In response, Smith & Nephew filed a
counterclaim alleging that ArthroCare and Ethicon, Inc., had violated the antitrust laws
by entering into a conspiracy in restraint of trade. Smith & Nephew’s theory of antitrust
liability was that ArthroCare and Ethicon had settled an earlier dispute in a manner
designed to restrain other competitors from entering the market for electrosurgical
devices and that ArthoCare had brought this action, although knowing it to be
04-1323,-1487 2
objectively baseless, as part of an unlawful conspiracy with Ethicon to interfere with
Smith & Nephew’s business.
Before trial, the district court bifurcated the case. The first phase encompassed
the patent issues of infringement, invalidity, and inequitable conduct. The second
phase addressed damages, willfulness, and the antitrust counterclaim. The court
stayed the second phase until after completion of the trial on the first.
At the conclusion of the patent trial, the jury determined that Smith & Nephew
had directly or indirectly infringed the three patents and that none of the patents were
invalid. Smith & Nephew then moved for judgment as a matter of law and a new trial.
ArthroCare meanwhile moved to dismiss Smith & Nephew’s antitrust counterclaim for
failure to state a claim upon which relief could be granted. Before Smith & Nephew’s
response to that motion was due, the district judge stayed all proceedings on the
antitrust counterclaim while she considered Smith & Nephew’s motions for judgment as
a matter of law and a new trial. The court eventually denied Smith & Nephew’s motions
and entered a permanent injunction against Smith & Nephew. ArthroCare Corp. v.
Smith & Nephew, Inc., 310 F. Supp. 2d 638, 681 (D. Del. 2004). On the same day, the
court granted ArthroCare’s motion to dismiss the antitrust counterclaim before Smith &
Nephew responded to the motion. Smith & Nephew sought reconsideration of the
dismissal order, but the court denied the motion for reconsideration. ArthroCare Corp.
v. Smith & Nephew, Inc., 315 F. Supp. 2d 615, 618 (D. Del. 2004). In denying
reconsideration, the court stated that the order staying proceedings on the antitrust
counterclaim had stayed only discovery and trial of the counterclaim and did not affect
the motion to dismiss. The court further stated that Smith & Nephew’s reliance on a
04-1323,-1487 3
statement by the court in a June 2003 telephone conference was misplaced, and that if
Smith & Nephew “believed that ArthroCare’s motion [to dismiss] was premature and
inconsistent with” the court’s stay order, it should have indicated so, presumably in a
more formal manner. Id. at 318 n.3. The court added that it was “not persuaded that
any argument from Smith & Nephew about the basis for its antitrust allegations will
change the court’s decision.” Id. at 319.
I
On appeal, Smith & Nephew first argues that the district court erred in dismissing
the antitrust counterclaim without giving it an opportunity to respond to the motion to
dismiss or to amend its counterclaim. Following the trial on the patent issues, the
district court continued the stay of the antitrust proceedings pending the disposition of
Smith & Nephew’s motions for judgment as a matter of law and a new trial, and
ArthroCare’s request for an injunction. After the court ruled on those matters, however,
the court dismissed the antitrust counterclaim even though it had not received a
response to the motion to dismiss from Smith & Nephew. The court noted that Smith &
Nephew had not filed a response to the motion and from its silence “presume[d] that
Smith & Nephew does not oppose the motion.” Moreover, the court concluded that the
“sham litigation” aspect of Smith & Nephew’s antitrust counterclaim was baseless. The
court did not address the other ground for the antitrust counterclaim, namely, the
allegation that ArthroCare and Ethicon had entered into a settlement of their dispute that
was designed to exclude other competitors, including Smith & Nephew, from the
relevant market.
04-1323,-1487 4
Smith & Nephew contends that, because of the stay of proceedings on the
antitrust counterclaim, it never had an opportunity to respond to the motion to dismiss.
In the absence of an opportunity to respond, Smith & Nephew contends that it was error
for the court to grant the motion to dismiss.
In its opinion on reconsideration, the district court characterized the pretrial order
staying proceedings on the antitrust counterclaim as staying discovery and trial but not
the motion to dismiss. While it is true that the written stay order referred only to
discovery and trial, the court elaborated on that order in a June 9, 2003, telephone
conference, in which the court stated that proceedings on the pending motion to dismiss
the antitrust counterclaim were stayed. In response to a question about the pending
motion to dismiss, the court stated that “everything is stayed and we’ll deal with the
antitrust issues later. . . . So the pending motion [to dismiss] on antitrust is stayed and
everything having to do with the antitrust counterclaims, discovery, substantive motions,
et cetera, is stayed pending further order of the court.” In light of that colloquy, it was
reasonable for Smith & Nephew to conclude that the stay order extended to the
proceedings on the motion to dismiss and that it would not be required to respond to the
dismissal motion until the stay was lifted. Thus, the effect of this sequence of events
was that the court granted ArthroCare’s motion to dismiss the antitrust counterclaim
without giving Smith & Nephew an opportunity to respond to the motion.
The Supreme Court has stated that under Rule 12(b)(6) of the Federal Rules of
Civil Procedure, “a plaintiff with an arguable claim is ordinarily accorded notice of a
pending motion to dismiss for failure to state a claim and an opportunity to amend the
complaint before the motion is ruled upon.” Neitzke v. Williams, 490 U.S. 319, 329
04-1323,-1487 5
(1989). The purpose of such a procedure is to enable the plaintiff “meaningfully to
respond by opposing the motion to dismiss on legal grounds or by clarifying his factual
allegations so as to conform with the requirements of a valid legal cause of action.” Id.
at 329-30. Providing the plaintiff with an opportunity to respond “crystallizes the
pertinent issues and facilitates appellate review of a trial court dismissal by creating a
more complete record of the case.” Id. at 330.
The Third Circuit, whose law applies to this procedural issue, has extended that
principle by adopting a categorical rule that “a Rule 12(b)(6) motion for dismissal . . .
may be disposed of only after a hearing, which affords an opportunity to present legal
arguments either orally, in writing, or both at the District Court’s discretion.” Dougherty
v. Harper’s Magazine Co., 537 F.2d 758, 761 (3d Cir. 1976); see also Oatess v.
Sobolevitch, 914 F.2d 428, 430 n.5 (3d Cir. 1990) (a district court may not dismiss a
complaint under Rule 12(b)(6) sua sponte without giving the plaintiff a chance to
respond). In this case, Smith & Nephew did not have an opportunity to respond to the
motion to dismiss, in contravention of that rule.
ArthroCare and Ethicon claim that Smith & Nephew was given the opportunity to
contest the motion to dismiss in the form of its motion for reconsideration, which the
district court denied. That argument is flawed for several reasons. In Dougherty, the
plaintiff also petitioned the district court for reconsideration, yet the Third Circuit
reversed the district court for dismissing the case without giving the plaintiff an
opportunity to respond. 537 F.2d at 761; see also Jordan v. County of Montgomery,
Pa., 404 F.2d 747, 748 (3d Cir. 1969) (finding that “the district court erred in dismissing
[the plaintiff’s] complaint on the defendants’ motions without affording him an
04-1323,-1487 6
opportunity to submit a written statement in opposition to the motions” even though the
plaintiff made a motion for relief from judgment under Rule 60(b)(1)). Additionally, when
it denied Smith & Nephew’s motion for reconsideration, the district court did not conduct
a de novo analysis of the motion to dismiss, but instead applied the highly restrictive
standard applicable to reconsideration motions. See ArthroCare, 315 F. Supp. 2d at
618. The reconsideration process thus did not satisfy the requirement that Smith &
Nephew be given the opportunity “meaningfully to respond” to the motion to dismiss.
On the merits, ArthroCare and Ethicon argue that Smith & Nephew’s
counterclaim should fail because the claim does not describe the antitrust injury
sufficiently and does not provide enough specificity in describing the antitrust violation.
Third Circuit precedent indicates, however, that if a claim fails for lack of specificity, the
district court should grant leave to amend the complaint, regardless of whether the
complainant asks for it. Shane v. Fauver, 213 F.3d 113, 116 (3d Cir. 2000); Borelli v.
City of Reading, 532 F.2d 950, 951 n.1 (3d Cir. 1976). The court should dismiss only if
the complainant is unable or unwilling to amend the complaint. Dist. Counsel 47 v.
Bradley, 795 F.2d 310, 316 (3d Cir. 1986). We therefore vacate the district court’s
dismissal of the antitrust counterclaim and direct the court to allow Smith & Nephew to
respond to the motion to dismiss. If the court concludes, as urged by ArthroCare and
Ethicon, that Smith & Nephew’s antitrust counterclaim fails for lack of specificity, Smith
& Nephew should be given the opportunity to amend.
Because we dispose of the counterclaim issue on a procedural ground, we take
no position on the merits of the counterclaim. However, we note that the district court
did not intend to issue a permanent injunction until after it disposed of the antitrust
04-1323,-1487 7
counterclaim. Because the district court must reconsider that counterclaim on remand,
the permanent injunction against Smith & Nephew must be vacated pending the
disposition of the antitrust counterclaim. See Tegal Corp. v. Tokyo Electron Am., Inc.,
257 F.3d 1331, 1351 (Fed. Cir. 2001).
II
Smith & Nephew next appeals the denial of its motion for judgment as a matter of
law that the asserted claims of the ’536 patent (claims 46, 47, and 56) were anticipated
by a prior art patent, U.S. Patent No. 4,116,198 (“the Roos patent” or “the ’198 patent”),
and an article by the inventor of that patent, Eberhard Roos and a co-author, E.
Elsässer.
As an initial matter, ArthroCare argues that Smith & Nephew is precluded from
arguing invalidity on appeal. ArthroCare maintains that Smith & Nephew did not specify
the basis on which it sought judgment as a matter of law after presenting its evidence at
trial, as required by Rule 50 of the Federal Rules of Civil Procedure. Because of that
failure, ArthroCare claims that Smith & Nephew may not assert invalidity now. That
argument has no merit, however, because the district judge acknowledged that she
precluded argument on the motions for judgment as a matter of law at trial and indicated
that Smith & Nephew’s rights were preserved.
On the merits, the ’536 patent is directed to an electrosurgical system. The three
asserted claims of the ’536 patent all recite an electrosurgical probe “comprising a shaft
having a proximal end and a distal end, an electrode terminal disposed near the distal
end, and a connector near the proximal end of the shaft electrically coupling the
electrode terminal to the electrosurgical power supply.” The claims also recite “an
04-1323,-1487 8
electrically conducting fluid supply for directing electrically conducting fluid to the target
site such that the electrically conducting fluid generates a current flow path between the
return electrode and the electrode terminal.” ArthroCare maintains that neither the
Roos patent nor the Roos and Elsässer article teaches either an electrically conducting
fluid or an electrosurgical probe with a connector at the proximal end connecting the
probe to the power supply. We disagree and hold that the evidence at trial clearly
established that the prior art references disclose both of those features.
A
With respect to the “electrically conductive fluid” limitation, claim 1 of the Roos
patent recites that the claimed electrode is “adapted to be filled with liquid to provide
electrical conductance.” ’198 patent, col. 7, ll. 60-62. ArthroCare posits that there is a
legally tenable distinction between a fluid that provides electrical conductance and “an
electrically conducting fluid.” In particular, ArthroCare argues that while all materials
provide some electrical conductance, most do not possess a sufficiently high level of
conductivity for a person of skill in the art to consider them “electrically conductive.”
ArthroCare’s distinction is belied by the description of “electrically conducting
fluid” in the ’536 patent and by the prosecution history of the Roos patent, which
together make clear that both patents recite a fluid that provides a path for the electrical
current between the electrodes of the electrosurgical devices. The ’536 patent explains
that the conducting fluid provides a “current flow path between the target site and the
return electrode.” ’536 patent, col. 3, ll. 27-30; id., col. 7, ll. 35-46. The inventor of the
’536 patent affirmed that he used the term “conducting fluid” in the ’536 patent to
indicate that the fluid “provides the pathway between the active electrode or electrodes,
04-1323,-1487 9
plural, and the return electrode.” Furthermore, the description of the fluid in the patent
indicates that the conducting fluid facilitates the passage of current by providing a low
electrical impedance current path between the two electrodes. Id., col. 7, ll. 40-43.
The prosecution history of the Roos patent makes clear that the fluid “provid[ing]
electrical conductance” recited in claim 1 of the Roos patent reads on the “electrically
conducting fluid” of the ’536 patent. The Roos patent prosecution history notes that the
washing fluid recited in claim 1 of the Roos patent must “provide the necessary
electrical conductor” between the electrodes and that “there is always a well-defined
current path . . . through the washing (and tissue) fluid.” Thus, the Roos patent
describes a fluid that creates a “current flow path.” That description of the fluid makes
sense given the language of claim 1 of the Roos patent, which recites that the liquid
“provides electrical conductance between said electrodes.” That language means that
the fluid is introduced during electrosurgery to provide conductance and to help
generate a “current flow path.” While it is true that, given enough voltage, an electrical
current can be made to flow through any substance, it would be bizarre to say that a
non-conductor was introduced to “provide electrical conductance.” Consequently, we
conclude that the Roos patent discloses an electrically conducting fluid.
The district court provided three reasons for concluding that the Roos patent
does not teach an electrically conducting fluid. First, the court reasoned that the Roos
patent does not disclose such a fluid because it does not list either saline or Ringer’s
lactate as an example of an electrically conducting fluid. That rationale is unconvincing,
however, because there is no requirement that an anticipating reference must provide
specific examples; rather, the reference need only “be enabling and describe the
04-1323,-1487 10
applicant’s claimed invention sufficiently to have placed it in possession of a person of
ordinary skill in the field of the invention.” In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir.
1994). Second, the district court focused on the fact that the Roos patent specification
does not distinguish between the fluid used in monopolar devices and the fluid used in
bipolar devices. The court reasoned that because most monopolar devices use
nonconducting fluid, the Roos patent does not clearly teach conducting fluid. That
inference, however, is contradicted by the claim language and prosecution history of the
Roos patent reviewed above. Finally, the court looked to an embodiment described in
the Roos patent in which the probe touches the tissue. The court concluded that there
would be no need for electrical contact with the patient’s tissue if the fluid were
conducting. The court’s analysis, however, focused on only one embodiment in the
Roos patent. There are other embodiments in the patent as to which it is clear that no
such direct contact is necessary, see, e.g., ’198 patent, col. 3, ll. 9-15, and it was error
for the district court to limit the disclosure of the prior art reference to a preferred
embodiment. See Ultradent Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065,
1068 (Fed. Cir. 1997). ArthroCare makes a similar point, contending that another
embodiment described in the Roos patent uses non-conducting fluid. In support of its
argument, ArthroCare points to a later patent by Roos, which describes the foreign
patent to which the Roos patent claimed priority. Like the district court’s analysis,
however, ArthroCare’s argument fails because it addresses only a single embodiment in
the Roos patent.
The Roos and Elsässer article also teaches an electrically conducting fluid. The
article describes how problems with prior art monopolar devices can be eliminated by
04-1323,-1487 11
providing “the high-frequency current a path . . . offering such low resistance that
aberrant currents or leakage currents do not even occur.” The article describes a way
of accomplishing that goal by placing a neutral electrode close to the active electrode in
an irrigation liquid so that current flows through the liquid. The article states that
creating such a current path with the irrigation liquid creates “very good electrical
conditions.” Furthermore, the diagrams in the Roos and Elsässer article depict current
“directly flowing” along a path through the fluid. The description of the role of the
irrigation liquid is quite similar to the description of the role of the conducting fluid in the
’536 patent, which is to provide a “current flow path between the target site and the
return electrode.” ’536 patent, col. 3, ll. 27-30.
ArthroCare maintains that the article does not teach an electrically conducting
fluid because the article uses the term “irrigation liquid” in describing the liquid used in
both the bipolar and the monopolar procedures. As we have noted, most monopolar
procedures use nonconducting fluids. Because the article does not use different names
for the liquids used in the two procedures, ArthroCare contends that there is no way of
knowing if the irrigation liquid is a conducting fluid. ArthroCare’s argument fails,
however, because the article pays little attention to the nature of the irrigation liquid
used in the monopolar prior art. It is unclear whether the liquid in the monopolar
procedure is nonconductive or whether it is even the same liquid that is used in the
bipolar case. What is clear is that, in describing bipolar devices, the Roos and Elsässer
article describes the liquid as providing a path for the current, thus serving as a
conducting fluid. Even giving ArthroCare the benefit of all reasonable inferences, the
04-1323,-1487 12
fact that the article uses the same term to refer to the fluid in both procedures does not
justify an inference that the fluid described in the bipolar procedure is nonconductive.
B
ArthroCare also maintains that the Roos patent and the Roos and Elsässer
article do not disclose “a connector near the proximal end of the shaft for electrically
coupling the electrode terminal to the electrosurgical power supply.” Both the patent
and the article clearly show that the electrodes are coupled to a power source. See,
e.g., ’198 patent, col. 5, ll. 30-35. Hence, in arguing that the prior art does not
anticipate, ArthroCare focuses on the term “connector near the proximal end.”
However, both the Roos patent and the article disclose such a connector.
The Roos patent states that the claimed invention relates to an electrosurgical
device with electrodes and “an insulated cable which can be passed through an
endoscope, to which can be connected the pole of a high frequency generator.” ’198
patent, col. 1, ll. 5-15; see also id., col. 7, ll. 50-51. The district court construed the term
“connector” to mean “a structure that electrically links the electrode terminal to the high
frequency power supply.” The insulated cable in the Roos patent does exactly that.
Specifically, Figure 4 of the Roos patent provides a schematic diagram for the
electrosurgical probes in the patent, and it illustrates that the electrodes are connected
via “output lines” to a high frequency generator. See id., col. 5, ll. 8-9; id., col. 5, ll. 35-
36.
On appeal, ArthroCare appears to accept the district court’s construction of the
term “connector,” but it asserts that the jury could have rejected the contention that a
wire is a connector for the purposes of the ’536 patent. ArthroCare raises various
04-1323,-1487 13
arguments concerning whether a wire is a connector, but those arguments miss the
point. The district court stated that a connector is a “structure” that electrically links the
electrodes and the power supply. That construction of the term “connector” easily
encompasses a wire between the electrodes and the power supply. Because
ArthroCare does not dispute the district court’s construction, ArthroCare’s attempt to
distinguish “wires” from “connectors” fails. The Roos patent clearly depicts a connector
under the district court’s construction.
Furthermore, the Roos patent indicates that the electrical wires that connect the
electrodes to the power source pass through the probe. The specification of the Roos
patent describes one embodiment as having the two electrical leads to the electrodes
“pass outwards from the cylindrical neutral electrode 11, which at 20 are combined to
form a single cable, leading to the rear end of the endoscope 13.” ’198 patent, col. 7, ll.
3-5. In other words, the electrical leads attach to the power source from near the
proximal end of the endoscope. While Smith & Nephew’s expert agreed that the Roos
patent does not explicitly identify the point at which the wires exit the probe, he stated
that a person of skill in the art would understand that the wires would be attached to the
power source after exiting the back end of the probe. See Helifix Ltd. v. Blok-Lok, Ltd.,
208 F.3d 1339, 1347 (Fed. Cir. 2000) (even if a piece of prior art does not expressly
disclose a limitation, it anticipates if a person of ordinary skill in the art would
understand the prior art to disclose the limitation and could combine the prior art
description with his own knowledge to make the claimed invention).
A “connector near the proximal end” of the electrosurgical probe is also found in
the Roos and Elsässer article. In Figure 8 of the article, the electrosurgical probe is
04-1323,-1487 14
drawn in cross-section. The figure shows the active and neutral probes attached to
wires, and the labels state that those wires go to the power supply. Therefore, a
connector is disclosed in the Roos and Elsässer article as well. Moreover, Figure 10 of
the article illustrates how those wires leave the probe. That figure is a schematic
diagram, which depicts the cutting and neutral electrodes inside the body and projecting
from the “resectoscope shaft” on one end. The wires also project from the other end of
the shaft, where they connect to a high frequency power source. Thus, the connectors
are shown exiting near the proximal end of the probe. The article even provides a
photograph of the instrument depicted in Figure 10. The photograph verifies that the
electrical leads leave the probe at its back end. In contending that the article does not
disclose a connector near the proximal end of the probe, ArthroCare limits its argument
to contesting the veracity of Smith & Nephew’s expert and disputing his conclusions
regarding the presence of the electrical connector in the article. However, the article
speaks for itself, and it clearly discloses such a connector.
In sum, Smith & Nephew has proved by clear and convincing evidence that the
asserted claims of the ’536 patent were anticipated either by the Roos patent or the
Roos and Elsässer article. Because the jury’s determination that the ’536 patent was
not invalid is not supported by substantial evidence, we reverse the district court’s
denial of Smith & Nephew’s motion for judgment as a matter of law on that issue.
III
Smith & Nephew also appeals the denial of its motion for judgment as a matter of
law that the ’882 patent is invalid because the claims of that patent were impermissibly
broadened by a certificate of correction. In particular, Smith & Nephew argues that
04-1323,-1487 15
claim 1 of the ’882 patent required three electrodes when it was originally issued, but
that after the correction the claim required only two electrodes. Smith & Nephew
contends that the change impermissibly broadened the patent’s scope.
When ArthroCare originally filed the application that matured into the ’882 patent,
the claims recited only an “active electrode” and a “return electrode.” Before any
examination on the merits, ArthroCare changed the claims by making what it termed “a
few minor amendments.” Those amendments changed the term “active electrode” to
“electrode terminal” in three places in claim 1 of the application, but did not make the
change in a fourth place, where the term “active electrode” was left unchanged. The
prosecuting attorney noted the error on the same day that the patent issued and
immediately asked the Patent and Trademark Office to change the remaining reference
from “active electrode” to “electrode terminal.” The prosecuting attorney testified at trial
that the change listed in the certificate of correction was made solely due to a
typographical error. Smith & Nephew did not attempt to rebut that evidence.
The correction of a ministerial error in the claims, which also serves to broaden
the claims, is allowable if it is “clearly evident from the specifications, drawings, and
prosecution history how the error should appropriately be corrected” to one of skill in the
art. Superior Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358, 1373 (Fed. Cir.
2001). At trial, Smith & Nephew sought to show that the requisite standard was not met
in the case of the correction to the ’882 patent. Smith & Nephew’s proof on that issue
failed to satisfy the jury, and we hold that substantial evidence supports the verdict.
In the first place, claim 1 of the ’882 patent does not make sense if it is
interpreted to contain three types of electrodes instead of two. The claim requires that
04-1323,-1487 16
an electrode terminal and a return electrode be coupled to a high voltage source. The
claim as originally issued then required that an “active electrode” be placed in close
proximity to the target site. High frequency voltage is then applied between the
electrode terminal and the return electrode, which induces the discharge of energy to
the target site. Nothing in the patent suggests any reason to place a third type of
electrode close to the target site. The whole point of the patent is to use the electrode
terminal and return electrode to apply a voltage across the tissue; a third type of
electrode would serve no apparent purpose. Moreover, the specification refers to
“electrode terminal” and “active electrode” interchangeably. See ’882 patent, col. 20, ll.
19-21; id., col. 20, ll. 53-54. That evidence indicates that it was clear how the
typographical error in the original claims should have been corrected.
The prosecution history further supports ArthroCare’s argument that it was
unambiguous how the remaining reference to an active electrode in claim 1 should be
changed. From the beginning, the claims referred to only two electrodes. The change
of the term “active electrode” to “electrode terminal” was made before any examination
on the merits, and the uncontroverted evidence establishes that it was meant to be a
global renaming. In fact, most of the references to “active electrode” in the claims were
changed. Finally, ArthroCare presented unrefuted testimony from an expert who stated
that he understood the term “active electrode” in the uncorrected claim to refer to the
“electrode terminal.”
Smith & Nephew’s only evidence that it remained unclear how to fix the error in
claim 1 is that claim 53, which depends on claim 1, also refers to “the active electrode.”
According to Smith & Nephew, that evidence implies that it cannot be apparent how to
04-1323,-1487 17
fix the remaining instance of “active electrode” in claim 1, because changing it to
“electrode terminal” would leave claim 53 without an antecedent basis. In fact,
however, a simple explanation for the use of the term “active electrode” in claim 53 is
that the prosecuting attorney made another error in claim 53 of the same type that was
corrected in claim 1. The prosecuting attorney’s failure to replace the term “active
electrode” twice in the claims, instead of once, does not demonstrate by clear and
convincing evidence that a person of ordinary skill in the art would not understand how
to correct those errors. Accordingly, substantial evidence supports the jury’s conclusion
that the certificate of correction was valid. We therefore affirm the district court’s denial
of judgment as a matter of law of invalidity of the ’882 patent.
IV
Finally, Smith & Nephew appeals the denial of its motion for judgment as a
matter of law that it was not liable for indirect infringement of the ’592 patent. The ’592
patent pertains to a method for conducting electrosurgery. The method comprises
positioning an electrode terminal near the target site in the presence of an electrically
conductive fluid. Next, a return electrode is positioned in the fluid, while ensuring “that
the return electrode is not in contact with the body structure.” ’592 patent, col. 24, ll. 13-
14. Finally, high frequency voltage is applied between the electrode terminal and the
return terminal so as to force current to flow into the target site. Smith & Nephew
argues that it is not liable for contributory infringement or inducement of infringement of
the ’592 patent, because there was no evidence that its probes were ever used in a
manner that directly infringed the patented method. Smith & Nephew maintains that
none of the videotaped surgical procedures using its probes infringed the patented
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method because in every case the return electrode was shown touching “the body
structure.” Smith & Nephew asserts that the jury erred in finding infringement because
ArthroCare convinced the jury to disregard the district court’s claim construction.
In construing the claims of the ’592 patent, the district court instructed the jury
that the return electrode “is not to contact the body at all during the performance of the
claimed method.” The court noted, however, that “[t]he claimed method does not
contain any time limitations. Thus, the claimed method is performed when each of the
three steps of the claim has been completed.” Smith & Nephew does not challenge that
claim construction.
Based upon the district court’s claim construction, the jury was free to find
infringement if it concluded that the return electrode did not touch the body when each
step of the patented method was being performed. There was no need for the electrode
to be kept apart from the body throughout the entire surgical procedure; nothing in the
claim language or in the court’s claim construction required that the electrode not touch
the body at any time between the performance of the steps of the claimed process.
That is in effect what the district court advised the jury when it instructed that the
claimed method does not contain time limitations and that the claimed method is
performed when each of the three steps is completed.
Smith & Nephew interprets the court’s claim construction to require that the
return electrode never touch the body until all the claimed steps are completed. That
interpretation, however, is not faithful to the claim construction that the trial court
adopted, and it is not a convincing interpretation of the claim language. When the
district court construed the claim language at issue here, it rejected Smith & Nephew’s
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proposed construction, which was that the return electrode must never touch the body
at any time during the surgery. The court properly rejected that proffered claim
construction on the ground that it imposed an unclaimed temporal requirement on the
method. In effect, Smith & Nephew is now advancing that rejected claim construction,
while maintaining that it has accepted the district court’s construction. We uphold the
district court’s claim construction and reject Smith & Nephew’s argument that the court’s
construction was actually a version of the very construction that the court rejected
before trial.
Substantial evidence at trial showed that Smith & Nephew’s probes were used so
that the return electrode did not touch the body at a time when all the other claim
limitations were met. ArthroCare’s expert stated that during surgery “the return
electrode is positioned back . . . so that you try to make sure that it’s not in contact” with
the body. Even Smith & Nephew’s expert admitted that there were instances in which
the return electrode was not in contact with the body during certain steps of the claimed
method. Additionally, upon viewing the videotaped electrosurgeries, project managers
for two of Smith & Nephew’s accused probes admitted that the return electrodes were
not in contact with body tissue during use.
There was also strong circumstantial evidence that Smith & Nephew’s probes
were used in an infringing manner, and that Smith & Nephew induced users to employ
the probes in that way. Smith & Nephew’s witnesses confirmed that the return
electrodes of the accused probes were not designed or intended to contact the body
tissue when power was being applied to the device. That evidence was supported by
testimony from ArthroCare’s expert. Moreover, the sales literature accompanying one
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of the accused devices instructs surgeons that “care should be taken to prevent tissue
contact with the return electrode.” That literature explains why the surgeon should
avoid touching the return electrode to the body tissue. Even though the return electrode
on the accused probe is enlarged so as to lower the return current density and thus
reduce the risk of burns, the return electrode of the Smith & Nephew device was still not
supposed to touch the body during the application of power because “[w]hile it will not
be as hot as the active electrode at the distal tip, the return electrode may become
heated. For this reason, it is important to avoid inadvertent contact with the tissue.”
Instruction manuals for the other accused probes similarly confirm that the return
electrode should be completely surrounded by or immersed in saline during use. Thus,
substantial evidence supports the jury’s determination that Smith & Nephew indirectly
infringed the claimed method. We therefore affirm the district court’s denial of judgment
as a matter of law with respect to the ’592 patent.
Each party shall bear its own costs for this appeal.
AFFIRMED IN PART, REVERSED IN PART, VACATED IN PART, and REMANDED.
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