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March 31, 2000


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 (D.C. 1998).

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.


A. Canady's 675 Patent

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 affected tissue.

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 tissue.

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;
[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).

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

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.

B. Erbe's APC Probes

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 ...

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