Dr. Peter Rentrop v. The Spectranetics Corporation,
Fed. Cir. 2008.

By: Karin C. Khan

Dr. Rentrop (“Rentrop”) sued The Spectranetics Corporation (“Spectranetics”) for infringement of his U.S. Patent No. 6,673,064 (“the ‘064 patent”) for an excimer laser catheter. Rentrop was awarded $500,000 after a jury found that Claim 1 of the ‘064 patent was not invalid and infringed and that Rentrop was the sole inventor. Furthermore, the district court had rejected Spectranetics inequitable conduct defense as well as its post-trial motion for judgment as a matter of law regarding infringement. Spectranetics appealed the district court’s decision regarding infringement and inequitable conduct, and also asserted that it was entitled to judgment as a matter of law regarding invalidity of the claims.

On appeal, Spectranetics argued that the jury instruction on obviousness was impermissible in light of KSR Int’l Co. v. Teleflex because it was a rigid instruction of the “teaching, suggestion, or motivation” test. However, the Court noted that Spectranetics did not raise this issue before the entry of judgment. Even though the KSR case was decided after the jury gave its verdict, the district court did not enter judgment until after its decision. Thus, the Court would not review an argument that Spectranetics had an opportunity to bring before the district court. The Court even went as far to consider whether the jury instructions would have been proper had Spectranetics timely raised the argument prior to judgment, and found that they did not conflict with the KSR decision.

Spectranetics appealed the district court’s decision denying judgment as a matter of law on infringement. In particular, Spectranetics argued that the claim term “tip” was not covered by its accused products because of a hard glue and platinum band at the end of the catheter device. However, Rentrop’s expert testified otherwise, explaining that the hard glue and platinum band was not the entire tip of the accused products. Although Spectranetics had also attempted to discredit Rentrop’s expert’s testimony as confusing to the jury, the Court affirmed that the expert’s testimony regarding the tip was consistent with the district court’s claim construction.

Lastly, Spectranetics appealed the district court’s decision that it did not establish an affirmative defense of inequitable conduct. Spectranetics had attempted to show that Rentrop failed to, or did not adequately, disclose certain prior art and that Rentrop downplayed the role of Spectranetics in developing the catheter of the ‘064 patent. At the district court, the only notable argument was Rentrop’s failure to disclose a “chicken bone” test performed by a Spectranetic’s technician. However, the Court affirmed the district court’s finding that this nondisclosure was not material to patentability.