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CANADY v. ERBE ELEKTROMEDIZIN GMBH & ERBE U.S.A.

September 10, 1998

JEROME CANADY, M.D., and ARGON ELECTRO-SURGICAL CORP., Plaintiffs,
v.
ERBE ELEKTROMEDIZIN GmbH and ERBE U.S.A., Defendants.



The opinion of the court was delivered by: URBINA

OMNIBUS MEMORANDUM OPINION RESOLVING ALL PENDING MOTIONS

 I. INTRODUCTION

 At issue in this action is U.S. Patent No. 5,207,675 ("the '675 patent"). The '675 patent relates to surgical devices in the field of electrosurgery. Plaintiffs and counter-defendants Jerome Canady and Argon Electro-Surgical Corporation (collectively "Canady") own the '675 patent. Defendants and counter-plaintiffs ERBE Elektronedizin GmbH and ERBE U.S.A (collectively "ERBE") manufacture and sell APC Probes 20132-070, 071, 072, and 100 ("APC Probes"). The APC Probes also relate to surgical devices in the field of electrosurgery.

 Canady filed this suit seeking declaratory judgment that ERBE's APC Probes infringe claims 1 and 11-16 of the '675 patent. ERBE asserted counterclaims alleging that the '675 patent is invalid because it was anticipated and rendered obvious by prior art not considered by the U.S. Patent and Trademark Office ("PTO"). ERBE presently moves for summary judgment seeking declaratory judgment that (1) the '675 patent is invalid and (2) its APC Probes do not infringe claims 1 and 11-16 of the '675 patent. ERBE also moves for default judgment claiming that Canady failed to answer or otherwise respond to its counterclaims. Upon consideration of the parties' submissions and the relevant law, the court denies ERBE's motion for summary judgment on invalidity, grants its motion for noninfringement, and denies its motion for default judgment.

 II. THE INVENTIONS

 A. Canady's '675 Patent

 On July 15, 1991, Dr. Jerome Canady filed a patent application entitled "Surgical Coagulation Device." After several amendments to the initial application, the PTO approved the application and issued the '675 patent to Jerome Canady on May 4, 1993. The '675 patent is related to a coagulation device that controls or prevents blood flow in tissue for various types of incisional surgical procedures using an endoscope. Specifically, the '675 patent discloses a coagulation device using ionizable gas, such as argon, and radiofrequency current ("RF current") to cause blood coagulation (stoppage of bleeding) in the tissue. Using this device allows the ionizable gas to conduct the RF current in a gas stream to the tissue where the RF current causes blood in blood vessels of the tissue to "blow away." As a result, the blood vessels coagulate thus ceasing blood flow in the tissue. In addition, the coagulation device causes blood coagulation without physical contact between the device and tissue.

 To perform this type of procedure, the '675 patent discloses a flexible tube passing through an endoscope which includes a flexible wire for conducting RF current. The flexible tube allows the ionizable gas to flow through the tube and endoscope. At the tip of the flexible tube and wire, the ionizable gas is discharged creating a gas stream that conducts the RF current from the flexible wire to the tissue which causes blood coagulation. In the '675 patent, claim 1 states the patented invention as follows:

 
1. A surgical tissue coagulator comprising an elongate, biocompatible, flexible tube having an open distal end and a proximal end, the tube having an external diameter of less than about 5 mm and being insertable into and maneuverable within a surgical endoscope;
 
means for connecting the proximal end of said tube with a source of an inert, ionizable gas so that a stream of said gas can flow through said tube and exit the distal end of said tube;
 
a flexible wire within said tube for conducting radio frequency current, the wire having a distal end for position adjacent the distal end of said tube, and means at the distal end of said wire for discharging an arc of radiofrequency energy away from the distal end of said wire within said stream of inert gas exiting the distal end of said tube so as to form an ionized gas stream which is capable of coagulating tissue during endoscopic surgery within a patient, the wire having a proximal end opposite the distal end of the wire, and means for connecting the proximal end of the wire with a source of radiofrequency energy; and
 
a handle attached to said tube adjacent the proximal end of the tube for maneuvering said tube within said endoscope while said handle is outside said endoscope. (Col. 4, Line 67 to Col. 5, Line 25) (emphasis added).

 Figure 2 of the '675 patent, as shown below, illustrates a preferred embodiment of the claimed invention. The preferred embodiment is used for endoscopic surgical procedures where a tube is inserted and passed through an endoscope to conduct the RF current and carry the ionizable gas.

 [SEE FIG.2 IN ORIGINAL]

 The preferred embodiment describes a tube (10) connected to a handle (18) and insertable into an endoscope (16). The tube (10) provides a flexible wire (28) for conducting RF current and extends to a distal end (30). The handle (18) is located outside of the endoscope for maneuvering the tube (10) and flexible wire (28) within the endoscope (16). The handle (18) includes a coaxial inlet (56) having a gas inlet (42) and a RF inlet (22). The tube (10) connects to the coaxial inlet (56) on the handle (18). The gas inlet (42) and RF inlet (22) connect to a gas line (26) and a RF line (46), respectively, from a coaxial outlet (54) on a base unit. The base unit includes a gas source (24) and a RF generator (44) that supply the gas line (26) and RF line (46) with ionizable gas and RF current, respectively. The ionizable gas and RF current flow from the base unit to the tube (10) through the coaxial inlet (56) on the handle (18). At the distal end (30) of the flexible wire (28), the ionizable gas, such as argon, is discharged to form a gas stream and conducts the RF current to the tissue (38) to cause coagulation. The handle (18) is used to maneuver the movement of the tube (30) and wire (28) within the endoscope.

 B. ERBE's APC Probes

 ERBE's APC Probes serve a similar purpose as the '675 patent, which is to perform tissue coagulation using RF current and ionizable gas, such as argon, with an endoscope. The different types of APC Probes are identical in structure except for the tube diameters and length. Figure A, as shown below, illustrates ERBE's APC Probes.

 [SEE Figure A. APC Probes IN ORIGINAL]

 The APC Probes include a flexible tube (A) with a distal end (B) insertable into an endoscope. The flexible tube (A) is capable of passing ionizable gas and also includes a thin wire for conducting RF current. In addition, the APC Probes also include a plug (C) having an insertable end (G) for connection to a coaxial adapter. The coaxial adapter is connected to a base unit which outputs ionizable gas, such as argon, and RF current to the flexible tube (A) through the insertable end (G) and plug (C). The APC Probes perform tissue coagulation in a similar manner as the '675 patent.

 III. THE ALLEGATIONS

 Canady asserts that ERBE's APC Probes infringe claims 1 and 11-16 of the '675 patent. Claim 1 is an independent apparatus claim upon which claims 11-12 and 15-16 are dependent. Claim 13 is an independent method claim which contains all the limitations of claim 1 and upon which claim 14 is dependent. As such, to prove infringement on claims 11-16, Canady must first show ERBE's APC Probes infringe claim 1 of the '675 patent. In claim 1, the '675 patent recites three elements (1) a "means for connecting" a tube with a source of ionizable gas, (2) "a flexible wire" contained within the tube, and (3) "a handle" for maneuvering the tube within an endoscope. (Col.1, Lines 21-24). Canady alleges the claimed elements, as recited in claim 1, read on the insertable end (G), the flexible tube (A), and the plug (C) of ERBE's APC Probes, and, therefore, the APC ...


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