Edwards v. CoreValve
The district court entered judgment on the verdict, but declined to enhance damages for the willful infringement. The court also declined to issue an injunction against future infringement, apparently on CoreValve’s representation that, if enjoined, it would move its manufacturing opera- tions to Mexico. The court also denied Edwards’ request to modify the litigation-agreed protective order and to permit Edwards’ patent counsel and technical expert to participate in the ongoing reexamination proceedings of the patent in suit and related patents. Each party appeals the rulings adverse to it.
We affirm the district court’s rulings, except that we remand for reconsideration of the court’s denial of an injunction in view of the representation of changed circumstances, and for reconsideration of the court’s ruling on the protective order as applied to patents not in suit, to the extent that this issue has not become moot.
Peers did not believe the work of the inventors:
Witnesses described the initial professional skepticism including refusal of medical journals to publish the inventors’ results; the persistence of the inventors; and the eventual recognition of their work as “most exciting” and “pioneering.” The record includes praise for the inventors from the CoreValve founder and the CoreValve CEO.
Of basic patent law:
A patentee’s right to exclude is a fundamental tenet of patent law. Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1247 (Fed. Cir. 1989) (“The right to exclude recognized in a patent is but the essence of the concept of property.”) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). The innovation incentive of the patent is grounded on the market exclusivity whereby the inventor profits from his invention. Absent adverse equita- ble considerations, the winner of a judgment of validity and infringement may normally expect to regain the exclusivity that was lost with the infringement. Edwards argues that the Court’s ruling in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) supports its position, for the willfulness of the infringement and other equitable aspects weigh in favor of restoration of the exclusive patent right.
The Court in eBay did not hold that there is a presump- tion against exclusivity on successful infringement litiga- tion. The Court did not cancel 35 U.S.C. §154, which states that “Every patent shall contain . . . a grant . . . of the right to exclude others from making, using, offering for sale, or selling the invention,” nor did the Court overrule Article I section 8 of the Constitution, which grants Congress the power to “secur[e] for limited Times to Authors and Inven- tors the exclusive Right to their respective Writings and Discoveries.” The Court held that equitable aspects should always be considered, stating: “We hold only that the deci- sion whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards.” eBay, 547 U.S. at 394. Statutory and historical as well as commercial considera- tions impinge on every equitable determination.
The parties had stipulated to a protective order with a “patent prosecution bar,” which precludes all persons who had access to the opponent’s confidential information pro- duced for this trial, from “working on patent prosecution” on this subject matter. Edwards asked the district court to confirm that this restraint did not apply to patent reexami- nation, pointing out that Medtronic had filed several reex- amination requests against Edwards’ patents. Edwards states that confidential information is not likely to be in- volved, but that this restriction would deprive Edwards of the services of its patent attorneys and technical expert who know most about Edwards’ patents and this technology.