St. Jude Medical et al v. Volcano Corporation

Filing 610

MEMORANDUM OPINION regarding Post-Trial Motions (see D.I. 479 , 480 , 481 , 482 , 483 , and 473 ) (see Memorandum Opinion for further details). Signed by Judge Richard G. Andrews on 8/22/2013. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

ST. JUDE MEDICAL CARDIOLOGY
DIVISION, INC., ST. JUDE MEDICAL
SYSTEMS AB, and ST. JUDE MEDICAL
S.C., INC.,
Plaintiffs,
Civil Action No. 10-631-RGA

v.
VOLCANO CORPORATION,
Defendant.

MEMORANDUM OPINION
Steven J. Fineman, Esq., RICHARDS LAYTON & FINGER, P.A., Wilmington, DE.; John
Allcock, Esq., DLA PIPER LLP, San Diego, CA; Drew M. Wintringham, III, Esq., Stuart E.
Pollack, Esq., Monica Thompson, Esq., Tamar Duvdevani, Esq., and Nicholas F. Aldrich, Jr.,
Esq., DLA PIPER LLP, New York, NY.
Attorneys for Plaintiffs-Counterclaim Defendants St. Jude Medical, Cardiology Division,
Inc., St. Jude Medical Systems AB, and St. Jude Medical S.C., Inc.
Thomas L. Halkowski, Esq., FISH & RICHARDSON, Wilmington, DE; Frank E. Scherkenbach,
Esq., FISH & RICHARDSON, Boston, MA; Todd G. Miller, Esq., Michael M. Rosen, Esq.,
FISH & RICHARDSON, San Diego, CA; Corrin N. Drakulich, Esq., Christina Brown-Marshall,
Esq., FISH & RICHARDSON, Redwood City, CA.
Attorneys for Defendant-Counterclaim Plaintiff Volcano Corporation.

August

U 2013

Pending before the Court are the parties' post-trial motions. St. Jude filed the following
post-trial motions: (1) Renewed Motion for Judgment as a Matter of Law ("JMOL") for
Infringement ofU.S. Patent No. 6,112,598 ("the '598 Patent") or in the Alternative for a New
Trial (D.I. 479); (2) Renewed Motion for JMOL ofNo Anticipation under 35 U.S.C. § 102 for
U.S. Patent Nos. 5,938,624 ("the '624 Patent") and 6,196,980 ("the '980 Patent") (D.I. 480); (3)
Renewed Motion for JMOL of No Obviousness under 35 U.S.C. § 103 for the '624 Patent (D.I.
481); (4) Renewed Motion for JMOL for Infringement ofU.S. Patent No. 6,248,083 ("the '083
Patent") or in the Alternative for a New Trial (D.I. 482); and (5) Renewed Motion for JMOL of
No Obviousness under 35 U.S.C. § 103 for the '980 Patent (D.I. 483). Volcano filed a Motion for
JMOL that St. Jude's Aeris and Certus Generation 6 and 7 Products Infringe U.S. Patent No.
6,976,965 ("the '965 Patent") (D.I. 473). 1
St. Jude filed this patent infringement action on July 2 7, 201 0, alleging that Volcano
infringes five patents: the '624 Patent, the '980 Patent, the '598 Patent, the '083 Patent and U.S.
Patent No. 6,167,763 ("the '763 Patent"). (D.I. 1). Volcano filed a counterclaim, alleging that
St. Jude infringes four patents, including among them the '965 Patent. (D.I. 8, 12, 39).
Separate trials were held for St. Jude's patent infringement claims against Volcano and
Volcano's patent infringement counterclaims against St. Jude. After a five-day trial regarding St.

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Volcano also has filed a Motion for Summary Judgment ofNo Unenforceability for
Inequitable Conduct or, in the Alternative, for a Ruling on the Merits of St. Jude's
Unenforceability Defense Without a Hearing. (D.I. 476). This motion is not addressed in this
Opinion and will be resolved by the Court separately.
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Jude's claims against Volcano, 2 the jury returned the following verdict. (D.I. 452). For the '598
Patent, the jury found that Volcano's products do not infringe claims 3, 5, or 12. For the '083
Patent, the jury found that Volcano's products do not infringe claims 1, 2, 10, or 14. For the '624
Patent, the jury found in favor of Volcano that claims 1, 2, and 10 are invalid as anticipated and
as obvious. For the '980 Patent, the jury found in favor of Volcano that claims 1, 2, and 10 are
invalid as anticipated and as obvious. 3
After a four-day trial regarding Volcano's counterclaims against St. Jude, 4 the jury
returned a verdict. (D.I. 456). Relevant to Volcano's pending motion for JMOL, the jury found
that St. Jude's accused products do not infringe claims 1, 4, or 5 of the '965 Patent under the
doctrine of equivalents.
The parties completed briefing of post-trial motions on February 28,2013. This is the
Court's decision on those motions.

I.

LEGAL STANDARDS
A.

Motion for Judgment as a Matter of Law

Judgment as a matter oflaw is appropriate if"the court finds that a reasonable jury would
not have a legally sufficient evidentiary basis to find for [a] party'' on an issue. Fed.R.Civ.P.

2

The trial transcript for the trial regarding St. Jude's claims against Volcano is available
at D.I. 418, 421, 424, 427, and 433. All citations to this trial transcript are in the format "Trial
Tr. I" followed by the page number.
3

The jury had nineteen decisions to make in the first trial. St. Jude's motions argue that
the jury got each and every one wrong.
4

The trial transcript for the trial regarding Volcano's counterclaims against St. Jude is
available at D.I. 440, 451, 455, and 460. All citations to this trial transcript are in the format
"Trial Tr. II" followed by the page number.
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50(a)( I). "Entry of judgment as a matter oflaw is a sparingly invoked remedy ... granted only
if, viewing the evidence in the light most favorable to the nonmovant and giving it the advantage
of every fair and resaonable inference, there is insufficient evidence from which a jury reasonably
could find liability." Marra v. Phila. Housing Auth., 497 F.3d 286, 300 (3d Cir. 2007) (internal
quotation marks omitted).
To prevail on a renewed motion for judgment as a matter of law following a jury trial, the
moving party "must show that the jury's findings, presumed or express, are not supported by
substantial evidence or, if they were, that the legal conclusions implied [by] the jury's verdict
cannot in law be supported by those findings." Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed.
Cir. 1998) (internal quotation marks omitted). '"Substantial' evidence is such relevant evidence
from the record taken as a whole as might be acceptable by a reasonable mind as adequate to
support the finding under review." Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888,
893 (Fed. Cir. 1984).
In assessing the sufficiency of the evidence, the court must give the non-moving party,

"as [the] verdict winner, the benefit of all logical inferences that could be drawn from the
evidence presented, resolve all conflicts in the evidence in his favor, and in general, view the
record in the light most favorable to him." Williamson v. Canso/. Rail Corp., 926 F.2d 1344,
1348 (3d Cir. 1991); Perkin-Elmer Corp., 732 F.2d at 893. The court may not determine the
credibility of the witnesses nor "substitute its choice for that of the jury between conflicting
elements ofthe evidence." Perkin-Elmer Corp., 732 F.2d at 893. Rather, the court must
determine whether the evidence supports the jury's verdict. See Dawn Equip. Co. v. Ky. Farms

Inc., 140 F.3d 1009, 1014 (Fed. Cir. 1998).; Gomez v. Allegheny Health Servs. Inc., 71 F.3d
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1079, 1083 (3d Cir. 1995) (describing standard as "whether there is evidence upon which
reasonable jury could properly have found its verdict"); 9B Wright & Miller, Federal Practice &

Procedure § 2524 (3d ed. 2008) ("The question is not whether there is literally no evidence
supporting the party against whom the motion is directed but whether there is evidence upon
which the jury properly could find a verdict for that party.").
Where the moving party bears the burden of proof, the Third Circuit applies a different
standard. This standard '"requires the judge to test the body of evidence not for its sufficiency to
support a finding, but rather for its overwhelming effect.'" Fireman's Fund Ins. Co. v.

Videfreeze Corp., 540 F .2d 11 71, 1177 (3d Cir. 1976) (quoting Mihalchak v. Am. Dredging Co.,
266 F.2d 875, 877 (3d Cir. 1959)); see also Agere Systems, Inc. v. Atmel Corp., 2005 WL
2994702, at *14 (E.D. Pa. Aug. 17, 2005) (citing Fireman's Fund Ins. Co., 540 F .2d at 1177).
The Court "'must be able to say not only that there is sufficient evidence to support a finding,
even though other evidence could support as well a contrary finding, but additionally that there is
insufficient evidence for permitting any different finding."' Fireman's Fund Ins. Co., 540 A.2d at
1177 (quoting Michalchak, 266 F.2d at 877).

B.

Motion for a New Trial

Federal Rule of Civil Procedure 59( a) provides, in pertinent part:
A new trial may be granted to all or any of the parties and on all or
part of the issues in an action in which there has been a trial by
jury, for any of the reasons for which new trials have heretofore
been granted in actions at law in the courts of the United States.
Among the most common reasons for granting a new trial are: ( 1) the jury's verdict is
against the clear weight of the evidence, and a new trial must be granted to prevent a miscarriage

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of justice; (2) newly discovered evidence exists that would likely alter the outcome of the trial;
(3) improper conduct by an attorney or the court unfairly influenced the verdict; or (4) the jury's
verdict was facially inconsistent. See Zarow-Smith v. New Jersey Transit Rail Operations, Inc.,
953 F.Supp. 581, 584 (D.N.J.1997).
The decision to grant or deny a new trial is committed to the sound discretion of the
district court. See Allied Chern. Corp. v. Daiflon, Inc., 449 U.S. 33,36 (1980); Olefins Trading,

Inc. v. Han Yang Chern. Corp., 9 F.3d 282,289 (3d Cir.1993) (reviewing district court's grant or
denial of new trial motion under deferential "abuse of discretion" standard). Although the
standard for grant of a new trial is less rigorous than the standard for grant of judgment as a
matter of law-in that the court need not view the evidence in the light most favorable to the
verdict winner-a new trial should only be granted where "a miscarriage of justice would result
if the verdict were to stand," the verdict "cries out to be overturned," or where the verdict
"shocks [the] conscience." Williamson, 926 F.2d at 1352-53.

II.

VOLCANO'S POST-TRIAL MOTION
Volcano moves for judgment as a matter oflaw that St. Jude's accused Certus Generation

6 and 7 and Aeris Generation 6 and 7 guide wire products infringe claims 1, 4 and 5 of the '965
Patent under the doctrine of equivalents. (D.I. 473). Volcano argues that "no reasonable jury
could conclude ... that the proximal flexible tube in St. Jude's current wires was not equivalent
to the claimed proximal coil in the context of the asserted claims." (D.I. 474 at 4). St Jude argues
in response that the jury heard "substantial evidence" to support its contention at trial that a tube
and a coil are not equivalent and, therefore, that the jury's verdict should stand. (D.I. 493 at 1).
The '965 Patent discloses and claims a pressure-sensing guidewire. '965 Patent at

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Abstract. Claim 1 of the '965 Patent recites the following:
1.

A pressure sensor apparatus comprising:
a guidewire;
a sensor housing having an external wall, a lumen, and a hole in
the external wall extending from an external surface of the sensor
housing to the lumen and being open to ambient fluid, the sensor
housing disposed near a distal extremity of the guidewire;
a first coil disposed proximally from the sensor housing;
a second coil comprising a radiopaque material and disposed
distally from the sensor housing; and
a solid state pressure sensor having a pressure sensitive region
located at or near one end thereof, the solid state pressure sensor
mounted within the sensor housing such that the pressure sensitive
region projects into the lumen of the sensor housing without
contacting the external wall of the sensor housing and such that a
portion of the pressure sensitive region is disposed opposite the
hole and is in fluid communication with the ambient fluid via the
hole.

Id. at claim 1. The disputed issue at trial was whether the flexible polymer tube in St. Jude's

current guide wires was equivalent to the claimed first coil.
Volcano argues that it presented "ample evidence" that the flexible polymer tube in St.
Jude's current guide wires "perform substantially the same function [as the claimed coil] in
substantially the same way to achieve substantially the same result." (D.I. 474 at 8). At trial, Dr.
Corl, a named inventor of the '965 Patent, testified that the sole function of the claimed first coil
in the context of the patent was to provide flexibility. (Trial Tr. II at 224-25). Volcano's expert,
Dr. Kenny testified that the function of the coils is to '"provide a flexible floppy tip for the
[guidewire]."' (Trial Tr. II at 581 (quoting '965 Patent at col.411.5-7)). Dr. Kenny further

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testified that the function of the polymer tube in St. Jude's current guidewires is "to provide a
flexible mechanical connection with the hypotube and the part of the product that has the sensor
housing." (Id. at 582). Dr. Kenny also explained that the polymer tube performed this flexibility
function in the same way as the claimed coil by using appropriate dimensions to achieve
flexibility. (Id. at 186, 563, 569, 585, 596, 604-05). Finally, Dr. Kenny testified that the polymer
tube achieved the same result as the claimed coil by providing a flexible, floppy tip while still
maintaining axial and torsional force. (Id. at 588).
Volcano also argues that St. Jude's expert, Dr. Durfee, conceded equivalence by
admitting at trial that the current St. Jude guidewires create flexibility through appropriate
dimensions. (D.I. 474 at 8 (citing Trial Tr. II at 832-34)). Volcano also cites to Dr. Durfee's
testimony that the polymer tube provided a flexible, floppy tip. Volcano essentially is rearguing
the infringement theory it presented at trial, which the jury was free to reject.
St. Jude presented evidence that a tube and a coil are different and that it is sufficient that
it show only one functional difference to sustain the jury's verdict. St. Jude's expert, Dr. Durfee,
testified that a coil provides both "axial" and "lateral" flexibility where as a tube is "axially ...
stiff." (Trial Tr. II at 754-55). Dr. Durfee further testified that this difference in flexibility has "a
very big impact on the ability of the guidewire to be steered into the narrow arteries." (Id. at 75556). Dr. Durfee also testified that a coil's results in regard to projecting axial forces and torsional
forces in a guidewire differ from a tube. (Trial Tr. II at 455, 758-60).
The jury is presumed to have considered all of the evidence, assessed the credibility of the
competing experts and fact testimony, and given the evidence whatever weight the jury felt
appropriate. The Court finds that the evidence presented was sufficient to support the jury's non-

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infringement verdict and that Volcano has not presented evidence that is so "overwhelming" that
the only rational conclusion was infringement. See Fireman's Fund, 540 F.2d at 1177; see also

Wells v. Conn. Gen. Life Ins. Co., 469 F.2d 1231, 1234 (lOth Cir. 1973). There is no basis to
overturn the jury's verdict.
Accordingly, the Court will deny Volcano's motion for judgment as a matter oflaw that
St. Jude's Certus Generation 6 and 7 and Aeris Generation 6 and 7 guide wire products infringe
claims 1, 4 and 5 of the '965 Patent under the doctrine of equivalents.

III.

ST. JUDE'S POST-TRIAL MOTIONS
A.

St. Jude's Motion for Judgment as a Matter of Law for Infringement of the
'598 Patent or in the Alternative for a New Trial

St. Jude moves for judgment as a matter oflaw that Volcano has infringed claims 3, 5,
and 12 of the '598 Patent. (D.I. 479). In the alternative, St. Jude seeks a new trial. (!d.). The
Court will deny the motion.

1.

Judgment as a Matter of Law

Claim 1 ofthe '598 Patent, from which all the asserted claims depends, recites a "sensor
element being mounted at the distal end of said [guidewire], on said mounting structure such that
it does not contact any surrounding rigid structures of said [guidewire]." '598 Patent at claim 1.
The Court construed the term "it does not contact any surrounding rigid structures" to mean "the
sensor element does not come into contact with any rigid structures that are peripheral to the
mounting structure." (D.I. 410 at 1). St. Jude argues that the sensor housing and the core wire
are the claimed "mounting structures" and that "[i]t is undisputed that Volcano's sensor elements
do not contact any rigid structures peripheral to these structures." (D.I. 484 at 2-7). St. Jude

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argues that it proved that, in Volcano's guidewires, the proximal ends of the sensor elements
were affixed directly to the sensor housing and the core wire by using adhesive. (!d.).
Volcano responds that it presented substantial evidence that in its guidewires, the sensor
element is mounted in direct contact with the rigid stainless steel housing that surrounds it. The
jury was shown pictures taken through a microscope showing direct contact between the edge of
the sensor and the housing, as well as manufacturing instructions confirming the same. (DTX1849; DTX 1871; DTX 1677; DTX 1850; DTX 1202). Dr. Corl testified that Volcano "intend[s]
to securely mount the proximal end of the sensor to the housing." (Trial Tr. I at 923). He also
testified that Volcano's solution was not "to avoid the housing." (ld.). Volcano's expert, Dr.
Kenny opined that the sensor element in the accused Volcano guidewires directly contacts the
surrounding rigid structure. (Trial. Tr. I at 1038-50).
It was within the jury's province to weigh the fact and expert testimony as well as

photographs and other documentary evidence. The Court concludes that Volcano presented
substantial evidence from which a jury could find against infringement. Accordingly, the Court
will deny St. Jude's motion for judgment as a matter oflaw that Volcano infringed the '598
Patent.

2.

New Trial

St. Jude asks for the Court to grant a new trial because of an "erroneous construction" of
the term "it." (D.I. 484 at 7). The Court will deny this request. St. Jude asserts that the
erroneous construction caused St. Jude prejudice because "Volcano does not dispute that under
St. Jude's construction, Volcano's guide wires infringe every limitation of claim 3." (Id. (citing
D.I. 289 Ex. 1 W 52-89)). St. Jude also asserts that it "submitted uncontroverted evidence that
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the pressure sensitive end of Volcano's pressure sensors did not contact any rigid structures" and
"[t]herefore, under St. Jude's proposed construction, Volcano infringes the '598 Patent." (Id. at
8). The Court, however, believes that it correctly construed the claims. (See D.l. 410). No new
trial is warranted on these grounds.

B.

St. Jude's Renewed Motion for Judgment as a Matter of Law of No
Anticipation for the '624 and '980 Patents

St. Jude moves for judgment as a matter oflaw that Volcano has failed to prove
anticipation by clear and convincing evidence for claims 1, 2, and 10 of the '624 and '980
Patents. (D.I. 480). The Court will deny the motion.
"An issued patent is presumed valid and the burden is on the party challenging the
validity of a patent to show that it is invalid by clear and convincing evidence." Minnesota Min.
& Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002). "Clear and convincing

evidence is such evidence that produces an abiding conviction that the truth of the factual

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contentions are highly probably." Active Video Networks, Inc. v. Verizon Commc'ns, Inc., 694
F.3d 1312, 1327 (Fed. Cir. 2012). Anticipation is a factual determination that is reviewed for
substantial evidence when decided by a jury." Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381
F.3d 1142, 1149 (Fed.Cir.2004) (citations omitted).
Anticipation requires that a single prior art reference disclose all of the limitations of the

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claim in dispute. See Zenith Elec. Corp. v. PDf Comm. Sys. Inc., 522 F.3d 1348, 1363 (Fed. Cir.
2008). "Typically, testimony concerning anticipation must be testimony from one skilled in the
art and must identify each claim element, state the witnesses' interpretation of the claim element,
and explain in detail how each claim element is disclosed in the prior art reference." Koito Mfg,

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381 F.3d at 1152 (finding insufficient evidence of invalidity where prior art reference had been
submitted into evidence but party failed to articulate how it rendered the patent invalid). Thus,
expert testimony that maps each element of the asserted claim to the prior art reference and
provides detailed analysis of how it meets the limitations ofthe claims typically constitutes
substantial evidence to support a jury verdict of invalidity. See Cordance Corp. v. Amazon. com,
Inc., 658 F.3d 1330, 1335-36 (Fed. Cir. 2011) (reversing district court of judgment as a matter of

law ofno anticipation).
St. Jude argues that Volcano provided no evidence that the FloWire contained two
limitations: (1) "fills the male connector to prevent capillary action from bodily fluid" ('624
Patent); and (2) "insulating material disposed between the core wire and conductive members ...
having an outer surface coextensive with outer surfaces of said conductive members" ('624 and
'980 Patents). (D.I. 484 at 9). With respect to the first limitation, St. Jude argues that the
FloWire did not satisfy this limitation because "the proximal extremity of the male connector in
the FloWire was not filled with the insulating material, but was instead an exposed solid core
wire without insulation." (D.I. 484 at 9). In other words, St. Jude argues that the FloWire's male
connector tail was not "completely filled without any gaps, joints or spaces with insulating
material to stop capillary action from occurring." (D.I. 511 at 4).
Volcano argues that the tail is irrelevant to the inquiry and that it presented substantial
evidence that the FloWire is filled with insulating material. (D.I. 494 at 9). Specifically, Dr.
Corl, who developed the FloWire, showed the jury a lab notebook diagram depicting how the
device was filled with "insulating material" that "resulted in the smooth connector." (Trial Tr. I
at 859-64; id. at 925-929; DTX 450). Mr. Vanderlaan, the production manager who oversaw the
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FloWire's manufacture, testified about the process for making the male connector. (Trial Tr. I at
955-961; DTX 634). Volcano's expert, Dr. Segal, testified that the product was smooth and,
therefore, "filled" within the meaning ofthe claim. (Trial Tr. I at 1179-84, 1196, 1237-39; DTX
600; DTX 1777). Finally, the jury was able to inspect the prior art FloWire. (Trial Tr. I at 85657).
The evidence presented by Volcano was sufficient to sustain the jury's verdict of
anticipation. To the extent the experts disagreed about whether or not the FloWire's tail bore any
relevance to the anticipation inquiry, the jury was entitled to credit Dr. Segal's testimony.

Solvay, S.A. v. Honeywell lnt'l, Inc., 2012 WL 3561617, at *5 (D. Del. 2012).
With respect to the second "coextensive" limitation, St. Jude argues that the tail of the
FloWire's male connector was not coextensive with the outer surface of the conductive band
because the fillet, the insulating material region between the connector and the tail, has a "conical
shape." (D.I. 484 at 10-11). Volcano argues that there was a factual dispute at trial whether the
tail was coextensive with the assembly or whether the claims required it to be. Volcano
presented evidence that the FloWire was coextensive, including testimony from Dr. Corl and Mr.
Vanderlaan as well as from its expert, Dr. Segal. (Trial Tr. I at 849-56, 859-68, 955-961, 118487, 1196, 1237-39). Dr. Segal also demonstrated for the jury that the FloWire was easy to clean,
and as stated earlier, the jury was able to examine a FloWire for itself.
The Court, thus, concludes that there was substantial evidence from which a reasonable
jury could conclude that the '624 and '980 Patents were anticipated by the FloWire.
Accordingly, the Court will deny St. Jude's motion for judgment as a matter oflaw of no
anticipation.
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C.

St. Jude's Renewed Motions for Judgment as a Matter of Law of No
Obviousness for the '624 and '980 Patents

St. Jude moves for judgment as a matter oflaw that Volcano has failed to prove
obviousness by clear and convincing evidence for claims 1, 2, and 10 ofthe '624 Patent, (D.I.
481) and for claims 1, 2, and 10 ofthe '980 Patent, (D.I. 483). Because the jury determined that
claims 1, 2, and 10 of the '624 and '980 Patents are invalid as anticipated and the Court has
concluded that the jury's verdict must stand, the Court need not reach the issue of obviousness.

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Accordingly, the Court will dismiss as moot St. Jude's motions for judgment as a matter oflaw

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concerning obviousness as to claims 1, 2, and 10 of the '624 and '980 Patents.

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D.

St. Jude's Renewed Motion for Judgment as a Matter of Law for
Infringement of the '083 Patent or in the Alternative for a New Trial

St. Jude moves for judgment as a matter oflaw that Volcano has infringed claims 1, 2,

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10, and 14 of the '083 Patent. (D.I. 482). In the alternative, St. Jude moves for a new trial. (ld.).
The Court will deny the motion.

1.

Judgment as a Matter of Law

Claim 1 of the '083 Patent recites:

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A [guidewire] assembly, comprising ... an interface cable (4)
having a first end connectable to a control unit (8), and having a
second end connectable (6) to the proximal end of said [guidewire]
(2); and information storing means (20; 22; Rx) provided on said
interface cable (4) ....
St. Jude argues that no reasonable jury could find that the information storing means is
not supplied on the interface cable. Volcano, however, presented evidence to demonstrate that

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the EEPROM in its accused wires is located on the connector, not the interface cable. Volcano's
expert, Dr. Wise, testified that the asserted claims require that the information storing means or
the electronic device be provided on the cable, not in a connector. (Trial Tr. I at 1127). He
further testified that the '083 specification distinguishes between providing a memory on the
cable and in the connector. (Id.; '083 Patent at co1.3 11.38-46; id. at col.5 11.22-25). Dr. Wise and
St. Jude's expert, Dr. Durfee, both testified that, in the accused Volcano wires, the memory

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device is mounted in the connector, not on the cable. (Trial Tr. I at 1124; id. at 697-98).
St. Jude argues that the connector can be "provided on" a separate interface cable as

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shown in figure 2 of the patent and that the placement of the EEPROM on Volcano's wires is
exactly what the '083 Patent discloses. (D.I. 484 at 17-19). Volcano responds that even in
Figure 2, the "EPROM 20 is not described as a connector, as being in a connector, or as being

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provided on the interface cable." (D.I. 494 at 16). Moreover, even assuming that the
embodiment of figure 2 did disclose a memory device located in a connector, such an
embodiment was not claimed. The asserted claim requires that the information storing means or
an electronic device be provided on an interface cable, not in a connector. See TIP Sys., LLC v.
Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008) ("Federal Circuit

precedent is replete with examples of subject matter that is included in the specification, but is
not claimed.")
St. Jude had the burden to prove infringement at trial. Given the evidence and argument
presented by both sides, a reasonable jury could conclude that Volcano's guidewires do not
infringe the '083 Patent.

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Accordingly, the Court will deny St. Jude's motion for judgment as a matter oflaw that
Volcano infringed the '083 Patent.

2.

New Trial

St. Jude asks for the Court to grant a new trial because "the Court's construction of
'interface cable' in claim 1 ofthe '083 Patent was incorrect." (D.I. 484 at 19). The Court will
deny this request. St. Jude asserts that ''under the correct construction, Volcano infringes the
'083 Patent." (Jd. at 20). Claim construction was the subject oflengthy briefing and oral
argument. The Court believes that it correctly construed this term. (See D.I. 410). No new trial
is warranted on these grounds.

III.

CONCLUSION
For the reasons set forth in this Opinion, the Court will deny the parties' post-trial

motions. An Order consistent with this Opinion will be entered.

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