IP Law Daily External defibrillator patent invalidity dispute jettisoned back to district court
Thursday, July 28, 2016

External defibrillator patent invalidity dispute jettisoned back to district court

By Jody Coultas, J.D.

Substantial evidence did not support each aspect of a jury verdict finding that competing defibrillator manufacturers, Koninklijke Philips N.V. and ZOLL Medical Corporation, directly infringed the other’s asserted patents, that Zoll did not contributorily infringe Philip’s patents, and that all patents-in-suit were valid, the U.S. Court of Appeals for the Federal Circuit has determined. The appeals court affirmed in part, reversed in part, and vacated in part the district court’s judgment denying both parties’ motions for judgment as a matter of law (Koninklijke Philips N.V. v. ZOLL Medical Corporation, July 28, 2016, Hughes, T.).

U.S. Patent Nos. 5,607,454, 5,749,905, 6,047,212 (the waveform patents) are directed to controlling the waveform of the electrical shock that is delivered to a subject person’s body by external defibrillators. The waveform patents allow external defibrillators to automatically vary the electrical shock based on the body composition of the subject, eliminating the need for a trained operator. U.S. Patent Nos. 5,800,460 and 5,879,374 (the self-test patents) are directed to an external defibrillator’s capability to test its own functional status without human intervention. The self-testing capability allows the external defibrillator to periodically test the functionality of its components, like whether the battery is sufficiently charged. The waveform and self-test patents are held by Philips.

U.S. Patent 5,330,526, held by Zoll, is directed to an electrode for use with an external defibrillator.

A jury found certain claims of the waveform and self-test patents valid, and that Zoll directly infringed claims of the patents. However, the jury concluded that Zoll had neither contributorily nor inducedly infringed any of the asserted claims of the waveform and self-test patents. The jury also found that Philips directly infringed each of the following claims 1, 8–9, 11–12, 19, and 24–25 of the ’526 patent, and that those claims were valid. Both parties appealed the district court’s denial of judgment as a matter of law (JMOL) on each on the grounds on which it did not prevail.

Invalidity. The district court properly denied JMOL of invalidity as to certain claims of the waveform patents, according to the court. It was indisputable that a prior art reference asserted by Zoll disclosed the "discharging" step of claim 4 of the ‘905 waveform patent, and could be argued that the prior art monitors a "patient-dependent parameter" as required by claim 4. However, the prior art did not disclose the step required by claim 4 that the defibrillator "shap[es] the waveform so that an initial parameter of a waveform phase" is based on that "patient-dependent parameter." Both parties presented expert evidence to explain why the incidental compressing/stretching of the waveform was or was not sufficiently disclosure by the prior art. The jury found that it was not disclosed, and the evidence in support of that conclusion was sufficient to uphold that conclusion.

No reasonable jury could conclude that prior art asserted by Zoll failed to disclose each of the features of the self-test patent, according to the court. The jury found that claim 7 of the self-test ’460 patent was not anticipated by U.S. Patent 5,579,234 (Wiley), which disclosed various methods for automatically testing an electronic device during periods of non-use. The evidence overwhelmingly weighed in favor of finding that Wiley disclosed both of the self-tests recited in claim 7.

The jury also erred in finding that claim 43 of the self-test ’374 patent was not anticipated by the VIVAlink product brochure, according to the court. The VIVAlink brochure described the VIVAlink AED defibrillator device. The self-testing procedure described in the brochure disclosed the "test signal generator" of claim 43, and the visual warning in the brochure disclosed the "fail-safe visual display." Philips’s alleged evidence supporting a narrower claim construction of the relevant terms was unpersuasive.

Zoll’s PD1400 defibrillator did not render claims 42 and 67–68 of the ’374 self-test patent obvious, according to the court. The evidence supporting the jury’s verdict of no invalidity was considerable, making it reasonable to conclude that the claims were not invalid.

Direct infringement. The jury properly found that Zoll directly infringes claim 51 of the ’454 waveform patent and claims 4 and 8 of the ’905 waveform patent, according to the court. Zoll’s argument that the district court presented an incorrect construction of those claims to the jury was rejected on the basis that the claim construction offered by Zoll was simply not correct. Neither the ordinary meaning of the claim language nor the intrinsic record supported Zoll’s overly narrow construction.

Zoll was also unable to show that it did not use its defibrillator devices in a directly infringing way, according to the court. Only the party that performs the therapeutic method on a subject patient can directly infringe the relevant method claims of the waveform patents. Zoll infringed the waveform method claims during its own product testing and trials of its devices on subject patients. This evidence also supported the jury’s finding that Zoll directly infringed device claims 1 and 5 of the ’212 waveform patent. The performance of testing and trials of its defibrillator products, directly infringed the waveform device claims. However, because the electrodes must be in electrical communication with a subject patient, Zoll did not infringe those claims by making and selling its defibrillator devices.

The jury found that Zoll directly infringes claim 7 of the ’460 self-test patent and claims 42 and 67–68 of the ’374 self-test patent, which recite a method for performing various self-test techniques in a defibrillator device. There was sufficient evidence that Zoll’s product testing and trials involved use of the defibrillator devices in a way that directly infringed the self-test method claims. A Zoll employee admitted that Zoll performs testing of its products, including the self-test functionality.

While a party that sells an apparatus capable of performing a patented method is generally not liable for direct infringement if that infringing act comes to pass, in this case Zoll may sell the defibrillators configured to automatically perform the self-test method claims without any additional intervention by Zoll’s customers. There was conflicting evidence as to whether Zoll’s defibrillator would actually automatically perform the self-test method claims upon sale to a Zoll customer. Therefore, it was not appropriate to find direct infringement liability for a seller of an apparatus that may perform patented methods.

Indirect infringement. Lack of knowledge of the patents and infringement supported the jury’s verdict of no contributory infringement for the claims of the ’454 waveform patent and the ’905 waveform patent, according to the court.A party is liable for contributory infringement where there is direct infringement, knowledge of the patent, "the component has no substantial noninfringing uses," and "the component is a material part of the invention." Zoll infringed each of the contested waveform and self-test method claims when performing testing and trials on its own defibrillator devices in the manner in which they were intended to operate. While Zoll undoubtedly knew about the waveform and self-test patents, Zoll’s belief in non-infringement was reasonable and a sufficient basis on which to ground the jury’s implicit finding of insufficient knowledge for contributory infringement.

However, Zoll had the requisite knowledge of the ’374 self-test patent and infringement. No reasonable jury could have reached the jury’s verdict of no contributory infringement by Zoll. Therefore, the court reversed the district court’s denial of JMOL of contributory infringement as to claims 42 and 67–68 of the ’374 self-test patent.

Indefiniteness. The jury found that claims 1, 8–9, 11–12, 19, and 24–25 of the ’526 patent were not invalid. A patent is invalid for indefiniteness if its claims fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. The lack of precision in the claim language may mean that the claims do not specify their scope with absolute precision, the court declined to find that the evidence overwhelmingly proved that the claims failed to specify their bounds with reasonable certainty. Therefore, the denial of JMOL of indefiniteness was not reversed on this argument. However, this ambiguity in the scope of the claims raised concern as to the charge the jury received prior to reaching its verdict. The "insolubly ambiguous" standard cited by the district court was legally erroneous, and prejudiced Philips, especially in light of the extensive case on indefiniteness that Philips presented

The cases are No. 2014-1764 and 2014-1791.

Attorneys: J. Michael Jakes (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for Koninklijike Philips N.V. David Issac Gindler (Irell & Manella LLP) for ZOLL Medical Corporation.

Companies: Koninklijke Philips N.V.; Zoll Medical Corp.

MainStory: TopStory Patent FedCirNews

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