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Arguments Based on KSR Waived for Failing to Raise Issue at District Court Prior to Judgment

Dec.23.2008

In Rentrop v. Spectranetics Corp. (No. 2007-1560; Dec. 18, 2008), inventor Rentrop sued his former employer Spectranetics for infringement of U.S. Patent No. 6,673,064 ("the '064 patent"), which involves an "Eximer Laser Catheter" used to perform angioplasty procedures. Spectranetics appeals from a final judgment of the district court awarding $500,000 to Rentrop. The judgment was based on a jury's verdict that found claim 1 of the '064 patent not invalid and infringed. After trial, the district court also rejected Spectranetics inequitable conduct defense and denied its motion for judgment as a matter of law on infringement. On appeal, Spectranetics argues that the trial court erred in its decisions on infringement and inequitable conduct and also argues that it is entitled as a matter of law to judgment of invalidity of the '064 patent.

First, on the issue of validity, Spectranetics argued for the first time on appeal that the district court gave an unduly rigid "teaching, suggestion or motivation" jury instruction in violation of KSR. The Federal Circuit holds that Spectranetics is precluded from bringing this challenge on appeal because the Court does not allow new arguments to be presented for the first time on appeal. The Federal Circuit also rejects Spectranetics claim that it could not previously raise this issue because KSR was decided after briefing and finds that because KSR was decided four months before judgment was entered, Spectranetics had ample time to bring KSR to the attention of the district court. Although the Federal Circuit holds that Spectranetics waived its arguments based on KSR, it notes that the jury instructions on obviousness appear to nevertheless be consistent with KSR.

On the issue of infringement, Spectranetics argued that insufficient evidence was presented at trial to show that the claim element related to the catheter's "tip" was met by Spectranetics's accused device. The Federal Circuit finds that sufficient evidence was presented by Rentrop to sustain the jury's finding and that Rentrop's expert's explanation of how claim 1 reads on the tip was consistent with the court's claim construction. Last, the Federal Circuit quickly dismisses Spectranetics challenge to the district court's rejection of its defense of inequitable conduct because the alleged non-disclosures were not highly material and at best, only a weak inference of intent to deceive can be found.

[http://www.cafc.uscourts.gov/opinions/07-1560.pdf]

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Mark Supko
Partner – Washington, D.C.
Phone: +1 202.624.2734
Email: msupko@crowell.com