The opinion of the court was delivered by: Urbina, District Judge.
Granting the Plaintiffs' Motion for Relief from Summary
Judgment of Non-Infringement,
At issue in this action is U.S.Patent No. 5,207,675 ("the 675
patent"). The 675
patent relates to an electro-surgical*fn1 device which
facilitates blood coagulation.*fn2 The plaintiffs, Jerome
Canady and Argon Electro-Surgical Corporation (collectively
"Canady") own the 675 patent. The defendants, a German
corporation named Erbe Elektromedizin GmbH and a related
corporation named Erbe U.S.A. (collectively "Erbe") manufacture
and sell several models of an electrosurgical device known as an
APC Probe. "APC" stands for Argon Plasma Coagulation.
Canady filed the instant action seeking declaratory judgment
that Erbe's APC Probes infringe various claims of his 675
patent. Erbe counterclaimed that the 675 patent is invalid
because it was anticipated and rendered obvious by "prior art"
which was not considered by the United States Patent and
Trademark Office ("PTO"). Erbe moved for summary judgment
declaring that (1) the 675 patent is invalid and (2) in any
event, Erbe's APC Probes do not infringe upon it. By Order and
Memorandum Opinion dated September 10, 1998, this court denied
defendant Erbe's motion for summary judgment on invalidity but
granted its motion for summary judgment of
noninfringement.*fn3 See Canady v. Erbe, 20 F. Supp.2d 54
Canady appealed from the grant of summary judgment of
noninfringement to defendant Erbe.*fn4 On May 10, 1999 the
U.S. Court of Appeals for the Federal Circuit affirmed without
opinion. See Canady v. Erbe, 1999 WL 319475 (Fed. Cir. 1999).
Plaintiff Canady filed a motion for relief from judgment
pursuant to Federal Rule of Civil Procedure 60(b). He seeks to
vacate the portion of this court's September 1998 order which
granted summary judgment of noninfringement to the
defendants.*fn5 Mr. Canady contends that Erbe wrongfully
withheld non-privileged documents which were clearly responsive
to several interrogatories and requests for production. The
withheld documents, he contends, could have supplied him with a
meritorious response to Erbe's motion for summary judgment of
noninfringement. Specifically, Erbe failed to produce two types
of documents which are relevant to whether its APC probes
infringed on his 675 patent: (1) an "Office Action" which the
PTO sent to Erbe in response to its application for a patent on
the APC probes; and (2) an Amendment which Erbe filed in
response to the Office Action.
For the reasons set forth below, the court concludes that the
information not disclosed by Erbe is material to the
infringement issue and might have enabled Canady to withstand
Erbe's motion for summary judgment of noninfringement.
Accordingly, the court will grant Mr. Canady's motion for relief
from judgment. The court will vacate that portion of its
September 1998 Order which granted summary judgment of
non-infringement to defendant Erbe.
On July 15, 1991, Dr. Jerome Canady filed a patent application
entitled "Surgical Coagulation Device." After several
amendments, the PTO approved the application and issued the 675
patent to Canady on May 4, 1993. The 675 patent covers a device
that controls or prevents blood flow in tissue for various types
of surgical procedures using an endoscope.*fn6 Specifically,
the 675 patent discloses a device using ionizable gas*fn7 and
radiofrequency current*fn8 to cause blood coagulation in
tissue. The 675 device uses ionizable gas, such as argon, as a
medium to conduct radiofrequency current to the tissue. When the
current comes into contact with the tissue, it causes blood in
the tissue's blood vessels to "blow away." As a result, the
blood vessels coagulate, reducing or ending blood flow in the
The 675 patent discloses a flexible tube passing through an
endoscope. The tube houses a flexible wire used to conduct a
radiofrequency current. The tube allows the gas to flow through
the tube and endoscope. At the distal*fn9 tip of the tube and
wire, the gas is discharged. The discharge creates a gas stream
which conducts the RF current from the flexible wire to the
In the 675 patent, claim 1 states the patented invention as
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
[a] means for connecting the proximal end of said
tube with a source of an inert,*fn10 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 [to] 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 [to] 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).
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 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 wire (28), the ionizable gas is
discharged to form a gas stream and conducts RF current to the
tissue (38) to cause coagulation.
The handle (18) is used to maneuver the tube (30) and wire
(28) within the endoscope.
Figure A. Erbe's APC Probes
Erbe's APC Probes serve a similar purpose to the 675 device,
i.e, to effect coagulation using RF current, ionizable gas and
an endoscope. The different APC Probes are identical except for
tube diameter and length. The Probes include a flexible tube (A)
with a distal end (B) insertable into an endoscope. The flexible
tube (A) can convey ionizable gas and also includes a thin wire
to conduct RF current.
In addition, the APC Probes 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 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 Grant of Summary Judgment of Noninfringement
A. Mr. Canady's Infringement Claim
Mr. Canady contended that Erbe's Probes infringe claim 1 and
11-16 of his 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. Claim 14 is dependent on claim 13. As
such, to prove ...