In an opinion addressing a panoply of patent law issues, the U.S. Court of Appeals for the Federal Circuit upheld a finding of infringement under the doctrine of equivalents but vacated the finding of willful infringement. Voda v. Cordis Corp., Case Nos. 07-1297 -1343 (Fed. Cir., Aug. 18, 2008) (Gajarsa, J.).
Voda's involved patents related to catheters used in interventional cardiology. Certain claims-in-suit included a limitation of a "second straight portion" or "a first substantially straight leg." Before the claims issued, Cordis redesigned the accused catheters to have a "curve portion," instead of a straight portion, to avoid literal infringement.
Ultimately, Voda sued Cordis for patent infringement. A jury found that Cordis' catheters infringed under the doctrine of equivalents and that the infringement was willful. Cordis appealed.
On the doctrine of equivalents, the Federal Circuit affirmed in part observing that an equivalents analysis can be articulated in two ways. Under the "function-way-result" test, "an element in the accused device is equivalent to a claim limitation if it performs substantially the same function in substantially the same way to obtain substantially the same result." Alternatively, under the "insubstantial differences" test, "an accused element is equivalent to a claim limitation if the only differences between the two are insubstantial." Voda's expert testified that the "curve portion" and a straight portion perform the same function, in the same way, to achieve the same result. Voda's expert also testified that the differences were insubstantial because cardiologists would have difficulty distinguishing the two during use. Consequently, the Federal Circuit held that Voda had presented substantial evidence from which a jury could find that the redesigned "curve portion" of the accused product was equivalent to the straight and substantially straight limitations. However, the Federal Circuit reversed the judgment of infringement for two of the asserted claims, noting that under Festo amendments and arguments made during prosecution (that the catheters must have a particular leg that is "substantially straight") barred application of the doctrine of equivalents for those claims.
The Federal Circuit also vacated the finding of willful infringement. The district court instructed the jury that "[w]hen a person becomes aware that a patent may have relevance to his or her activities, that person has a duty to exercise due care and to investigate whether or not his or her activities or proposed activities infringe any valid, enforceable claim of the patent." This jury instruction was erroneous under the Federal Circuit's en banc Seagate decision, which eliminated the affirmative duty of due care to avoid willful infringement, substituting instead the standard of "objective recklessness." Conceding that the jury instruction was error given the intervening change in the law, Voda argued that the error was harmless. The Federal Circuit disagreed. In view of the evidence that Cordis had redesigned its catheters before the issuance of the patents-in-suit and had obtained several opinions of counsel, the Federal Circuit determined that a correct jury instruction may have resulted in a jury verdict of no willfulness. The Federal Circuit remanded and left it to the discretion of the district court whether to order a new trial on willfulness or whether to grant judgment as a matter of law that the evidence of willfulness was insufficient. The Federal Circuit rejected Cordis' argument that a new trial on infringement would be required under the Seventh Amendment if a new trial on willfulness were ordered.
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