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By a Clerk’s notice filed July 22, 2010, the matter was taken under submission.

United States District Court

For the Northern District of California

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

TYCO HEALTHCARE GROUP LP d/b/a

VNUS MEDICAL TECHNOLOGIES

Plaintiff

 v.

BIOLITEC, INC., et al.,

Defendants /

No. C-08-3129 MMC

ORDER DENYING DEFENDANTS’

MOTION FOR SUMMARY JUDGMENT

THAT ASSERTED ‘433 AND ‘970

CLAIMS ARE INVALID FOR LACK OF

WRITTEN DESCRIPTION

Before the Court is defendants “Motion for Summary Judgment that the Asserted

‘433 and ‘970 Claims are Invalid for Lack of Written Description,” filed June 25, 2010. 

Plaintiff Tyco Healthcare Group LP has filed opposition, to which defendants have replied. 

Having read and considered the papers filed in support of and in opposition to the motion,

the Court rules as follows.1

BACKGROUND

In the instant action, plaintiff alleges defendants have infringed the claims of U.S.

Patent Nos. 6,769,433 (“‘433 Patent”) and 7,406,970 (“‘970 Patent”). By the instant motion,

defendants argue they are entitled to summary judgment on their respective counterclaims

that Claims 1, 2, and 10 of the ‘433 Patent and Claims 1, 2, 3, 8, 9, 13, 15, 17, 19 and 20 of

the ‘970 Patent are invalid for failure to satisfy the written description requirement in 35

U.S.C. § 112.

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Claim 1 of the ‘433 Patent is an independent claim that claims a “method of applying

energy to a vein to cause the vein to durably assume a reduced diameter,” specifically, a

method comprising the following steps: (1) “introducing a catheter having a working end

into a vein having an inner wall”; (2) “pre-shaping the vein such that the inner wall of the

vein is brought toward the working end of the catheter so as to reduce the diameter of the

vein”; (3) “applying energy from the working end of the catheter to the vein so as to cause

the vein to durably assume a diameter of at least as small as the reduced diameter

achieved in the step of pre-shaping the inner wall of the vein toward the working end of the

catheter”; and (4) “moving the catheter along the vein during the step of applying energy.” 

See ‘433 Patent, col. 19, ll. 15-30. Claim 2 of the ‘433 Patent claims the method of Claim 1

with the additional limitation that “a lengthy occlusion is formed along the area of the vein in

which the catheter is moved.” See ‘433 Patent, col. 19, ll. 31-33. Claim 10 of the ‘433

Patent claims the method of Claim 1 with the additional limitation that the “energy” that is

applied is “light energy.” See ‘433 Patent, col. 19, ll. 50-51.

Claim 1 of the ‘970 Patent is an independent claim that claims a “method of treating

venous insufficiency,” specifically, a method comprising the following steps: (1) 

“introducing an elongate member into a vein having an inner wall”; (2) “flattening the vein

such that the inner wall of the vein is brought toward a distal region of the elongate

member”; (3) “applying energy from the distal region of the elongate member to the vein to

create a thermal effect in the vein so as to reduce the diameter of the vein and lead to

occlusion of the vein”; and (4) “retracting the elongate member along the vein during the

step of applying energy.” See ‘970 Patent, col. 18, ll. 53-64. Claim 2 of the ‘970 Patent

claims the method of Claim 1 with the additional limitation that “a lengthy occlusion is

formed along the area of the vein in which the elongate member is retracted during the step

of applying energy.” See ‘970 Patent, col. 18, ll. 65-68. Claim 3 of the ‘970 Patent claims

the method of Claim 1 with an additional step, specifically, “delivering fluid to the vein

where the distal region of the elongate member is located.” See ‘970 Patent, col. 19, ll. 1-

3. Claim 8 of the ‘970 Patent claims the method of Claim 1 with the additional limitation

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that the “energy” applied is “light energy.” See ‘970 Patent, col. 19, ll. 9-11. Claim 9 claims

the method of claim 8 with the additional limitations that the “elongate member” is “a fiber

optic” and that the “light energy” is applied with “the fiber optic.” See ‘970 Patent, col. 19, ll.

16-17. Claim 13 of the ‘970 Patent claims the method of Claim 1 with the additional

limitation that the “flattening” step includes the step of “compressing the anatomy

surrounding the vein at the location of the distal region of the elongate member.” See ‘970

Patent, col. 19, ll. 28-31.

Claim 15 of the ‘970 Patent is an independent claim that claims a “method of treating

venous insufficiency,” specifically, a method comprising the following steps:

(1) “introducing an elongate member having an axis into a vein having an inner wall”;

(2) “moving the inner wall of the vein toward the axis of the elongate member at a distal

region of the elongate member, independently of the elongate member”; (3) “applying

energy from the distal region of the elongate member to the vein to create a thermal effect

in the vein so as to reduce the diameter of the vein and lead to occlusion of the vein”; and

(4) “retracting the elongate member along the vein during the step of applying energy to

form an occlusion along the area of the vein where the elongate member is retracted during

the step of applying energy.” See ‘970 Patent, col. 20, ll. 3-17. Claim 17 of the ‘970 Patent

claims the method of Claim 15 with the additional limitation that the “moving” step includes

the step of “compressing the anatomy surrounding the vein at the location of the distal

region of the elongate member.” See ‘970 Patent, col. 20, ll. 21-24. Claim 19 of the ‘970

Patent claims the method of Claim 15 with the additional limitation that the energy applied

is “light energy.” See ‘970 Patent, col. 28-29. Claim 20 of the ‘970 Patent claims the

method of claim 19 with the additional limitations that the “elongate member” is “a fiber

optic” and that the “light energy” is applied with “the fiber optic.” See ‘970 Patent, col. 20, ll.

30-32.

The specifications of the ‘433 and ‘970 Patents are identical to each other, and each

is identical to the 1997 application from which both patents are derived. (See Steenburg

Decl. Ex. 58.)

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DISCUSSION

Section 112 provides that a “specification shall contain a written description of the

invention.” See 35 U.S.C. § 112, ¶ 1. “Adequate written description means that the

applicant, in the specification, must convey with reasonable clarity to those skilled in the art

that, as of the filing date sought, he or she was in possession of the claimed invention.” 

Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009)

(internal quotation, citation and alteration omitted). Stated otherwise, the specification

“considered as a whole must convey to one of ordinary skill in the art, either explicitly or

inherently, that [the inventor] invented the subject matter claimed in the [ ] patent.” See

Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000). “[W]hatever the specific

articulation, the test requires an objective inquiry into the four corners of the specification

from the perspective of a person of ordinary skill in the art.” Ariad Pharmaceuticals, Inc. v.

Eli Lilly and Co., 598 F.3d 1336, 1351 (2010). “[C]ompliance with the ‘written description’

requirement of § 112 is a question of fact.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,

1563 (Fed. Cir. 1991).

Because patents are presumed valid, a party seeking to invalidate a patent by

summary judgment must demonstrate it is undisputed that “clear and convincing evidence”

exists to establish the inventor did not comply with the written description requirement, see

ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1376 (Fed. Cir. 2009),

specifically, that no trier of fact could reasonably find the specification “conveyed with

reasonable clarity to those of ordinary skill in the art that [the inventor] has in fact invented

the [invention] recited in [the] claims,” see Vas-Cath, 935 F.2d at 1567 (reversing order

granting summary judgment of invalidity for failure to comply with written description

requirement in light of triable issues of fact).

As noted, defendants argue that three claims of the ‘433 Patent and ten claims of

the ‘970 Patent are invalid for failure to comply with the written description requirement. In

their motion, defendants characterize plaintiff’s infringement contentions as follows: 

“[Plaintiff] alleges that defendants indirectly infringe the ‘433 and ‘970 claims when, inter

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alia, they sell single fiber optic lines that doctors place inside veins and use to apply laser

energy. [Plaintiff] focuses particular attention on ordinary bare-tip laser fibers . . . . ” (See

Defs.’ Mot. at 2:25-28 (internal citation omitted).) With respect to the issue of invalidity,

defendants argue the subject claims are “invalid because a person of ordinary skill in the

art reading the September 1997 application on which the patents are based would not

understand the invention to include applying energy to veins by means of a single bare-tip

fiber.” (See id. at 3:12-14 (internal citation omitted).) In other words, defendants’ theory is

that a person of ordinary skill in the art, having read the specification, would not understand

the applicant to have invented a method of applying energy to veins in the manner

employed by the accused products, specifically, a single bare-tip fiber, and, consequently,

the subject claims are invalid.

As plaintiff correctly notes, the Federal Circuit has held that “[t]he invention is, for

purposes of the ‘written description’ inquiry, whatever is now claimed [in the patent].” See

Vas-Cath, 935 F.2d at 1664 (emphasis in original). Consequently, for purposes of the

written description requirement, the issue is not whether a specification provides an

adequate description of an accused product, but, rather, whether the specification provides

an adequate description of the claimed invention. For example, in Moba, B.V. v. Diamond

Automation, Inc., 325 F.3d 1306 (Fed. Cir. 2003), where the plaintiff had alleged

defendant’s customers infringed plaintiff’s claimed method for “lifting eggs” when those

customers used defendant’s “moving conveyor,” the Federal Circuit found unpersuasive

defendant’s “contention that the [subject] patent does not adequately disclose lifting eggs

from a moving conveyor,” for the reason that such argument “merely revive[d] its noninfringement argument in the cloak of a validity challenge.” See id. at 1321 (affirming jury’s

finding that patent claiming method to lift eggs was “not invalid for lack of an adequate

written description”); see also, e.g., Inline Connection Corp. v. Earthlink, Inc., 684 F. Supp.

2d 496, 528, 531 (D. Del. 2010) (holding “written description analysis examines whether the

inventor possessed the claimed invention, not whether he possessed or invented the

accused technology”; rejecting defendant’s arguments that claims were invalid because

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specification did not “teach anything” about defendant’s accused product).

The cases on which defendants rely address whether a particular claim element is

adequately described in the specification. See, e.g., PowerOasis, Inc. v. T-Mobile USA,

Inc., 522 F.3d 1299, 1307-11 (Fed. Cir. 2008) (determining whether specification

adequately described claimed “customer interface” element). Here, by contrast,

defendants fail to identify any particular claim element(s) not adequately disclosed. Rather,

as discussed above, defendants argue that the specification does not disclose use of

“single bare-tipped fiber.” None of the claims of the ‘433 or the ‘970 Patents, however,

include a limitation requiring the person performing the method use a “single bare-tipped

fiber” to apply energy. Consequently, defendant’s argument is misplaced, at least when

raised in support of a contention that the claims are invalid for lack of an adequate written

description. See Phillips Petroleum Co. v. United States Steel Corp., 673 F. Supp. 1278,

1290-91 (D. Del. 1987) (rejecting defendant’s argument that patent inventing “crystalline

polypropylene” molecules was invalid for failure to “describe” molecules with particular

viscosity and weight of accused products; noting claims did not “contain[ ] a limitation

regarding intrinsic viscosity or molecular weight,” and, consequently, defendant’s

contentions were “immaterial” with respect to whether claims were adequately described),

aff’d, 865 F.2d 1247, 1251-52 (Fed. Cir. 1989) (affirming district court; characterizing

defendant’s argument as “relat[ing] to infringement, not to patentability”).

Accordingly, defendant has not shown it is undisputed that Claims 1, 2, and 10 of the

‘433 Patent and Claims 1, 2, 3, 8, 9, 13, 15, 17, 19 and 20 of the ‘970 Patent, or any of

them, are invalid for failure to satisfy the written description requirement.

CONCLUSION

For the reasons stated above, defendants’ the motion is hereby DENIED.

IT IS SO ORDERED.

Dated: August 3, 2010 

MAXINE M. CHESNEY

United States District Judge

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