Claim 1 of the '402 patent requires parallel blood flow not only within the tubing but also at the points the blood enters and leaves the catheter, where the flow must be parallel to the vessel walls. The Vas-Cath, Kendall, and IMPRA catheters, like the Guarino catheter, draw in blood through apertures that open at right angles to the path within the tube and to the flow of blood within the vessel. Perhaps the openings serve equivalent functions, but the prosecution history bars Mahurkar from making this demonstration. So, too, the accused catheters blood intakes are un-beveled, for the reasons Mahurkar described serial '671 as unbeveled.
And the tapered tips of the accused catheters are not cut obliquely to produce a point. While it is linguistically possible to use the word "bevel" to refer to a taper by emphasizing the angle aspect of the definition, I am convinced by reading the documents that Mahurkar used "bevel" to refer to an angled cut through the tubing. The Oxford English Dictionary includes many senses of "bevel"; what unites them is the element of cutting at an angle. Tapered tips are not formed by cutting at an angle. So the tips of the accused catheters do not literally infringe the '402 patent and cannot be brought back within it by the doctrine of equivalents. There is accordingly no reason to allow further discovery into the issues raised by the doctrine of equivalents.
One is inclined to ask what this fuss is about. What Vas-Cath, Kendall, and IMPRA have done to establish non-infringement of the '402 patent strengthens Mahurkar's case that their catheters do infringe his '968 and '651 patents, perhaps more besides. Underneath this strategy must be a belief that the '968 and "651 patents are more vulnerable on other grounds. A motion for summary judgment on the '651 patent remains pending, and two of the other patents (the '141 and '329 patents) face a contest at trial concerning the adequacy of the written description in the earliest filings from which they take their priority dates. At all events, although removing the claims based on the '402 patent will not shorten the case or avoid a trial, it will simplify that trial -- and simplification of trials is much to be desired, for a reduction in the number of issues increases the chance that the jury will be able to resolve the remainder accurately.
I deny Mahurkar's motion to compel and grant the motions for protective orders. Formally, I am not granting the motions for summary judgment. Now that Mahurkar knows that no additional discovery will be taken on this question, he has one last opportunity to persuade me that his rivals have depicted the prosecution history incorrectly. I give Mahurkar 14 days to file a brief in opposition to the pending motions for summary judgment. No reply briefs will be accepted without order of court, and unless Mahurkar's brief casts the subject in new light I will grant the motions for summary judgment by return mail without further explanation.
Other pending business. Mahurkar's "Motion to Strike Pursuant to Fed. R. Civ. P. 12(f) and for Other Relief Pursuant to Court's inherent Authority" is denied. The motion -- a litany of complaints about Vas-Cath's rhetoric -- must have been filed for effect rather than with any prospect of action. I cannot strike language out of briefs filed in the Federal Circuit and am not inclined to take a red pencil to the briefs filed in this court. This is hard-fought litigation, and if Vas-Cath has overstepped the bounds of propriety it will have to work to overcome the skepticism that greets future presentations. Neither side is free from sin in this case.
Mahurkar's "Request for Decision Pursuant to Local Rule 12(r)" is denied; the case is slowly wending its way to final decision. The conference scheduled for December 19 will include discussion of discovery and oral arguments on Vas-Cath's third motion for partial summary judgment (concerning the '651 patent). I am particularly interested in the parties' views about (a) whether it is possible or desirable to conduct the discovery in a particular sequence; (b) the cutoff date for discovery; and (c) the date for trial. Vas-Cath should be aware that I will not entertain any further motion for summary judgment concerning the adequacy of the written description underlying the '141 and '329 patents. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 19 U.S.P.Q.2D (BNA) 1111 (Fed. Cir. 1991), may not absolutely forbid further inquiry on this subject, but it means that efforts in that direction are not worth the candle. Once discovery closes, we will move promptly to trial.
Frank H. Easterbrook
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