Hess v. Advanced Cardiovascular Systems, Inc.

106 F.3d 976 (1997)

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Nature of the Case

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Facts

The '071 patent listed Drs. John B. Simpson and Edward W. Robert as the inventors. It covers a balloon angioplasty catheter that is inserted into a patient's artery and the balloon is inflated by forcing a radiographic fluid into it under pressure; the resulting expansion of the balloon eliminates or reduces the blockage of the artery. While developing the catheter Simpson and Robert attempted to find a material from which a balloon could be made. They were eventually referred to P, an engineer at Raychem Corporation. P suggested that the doctors try Raychem's heat-shrinkable irradiated modified polyolefin tubing and demonstrated how such a material could be used to form a balloon by heating the tubing above its crystalline melting point, applying pressure, and then cooling the material. P also suggested the use of an adhesive-free seal to attach the balloon to the catheter. He described how one end of the tubing could be shrunk fit onto the central shaft of the catheter without the use of any potentially-toxic adhesive chemicals. P admitted that the basic principles which he taught them were 'in various published textbooks and the like' and 'was a generally known process to a number of companies.' P provided samples and suggested, 'approaches to construction of the catheter' using the Raychem tubing. Simpson and Robert then developed and built their catheter. The doctors finally developed the balloon using a technique called free-blowing, a technique that P admittedly did not suggest. Pursuant to P's suggestion, the doctors attempted to avoid the use of adhesives and shrink fit the balloon to the catheter shaft, but they encountered leakage problems. The doctors ultimately developed an acceptable adhesive-free seal. P did not participate in the day-to-day experimentation. The doctors applied for a patent in April 1978 and the '071 patent issued with twenty-one claims in April 1982. The doctors started D, to which they assigned the '071 patent. Sales of the product grew rapidly. In 1987, D sued SciMed for infringement. The question of P’s alleged co-inventorship first arose when in its answer SciMed asserted, as one ground for challenging the validity of the patent, that there was a 'failure of the patentees to join P as a co-patentee.' D got the patent reexamined and added additional claims and got the original claims reaffirmed. P eventually asserted that he 'made substantive contributions to the subject matter disclosed' in the '071 patent and 'should be named as a co-inventor thereof.' P intervened in the D-SciMed suit to file a cross-complaint against D seeking a declaration that he was a joint inventor of the catheter the '071 patent covered and seeking correction of the patent to reflect his status. The district court dismissed P's cross-complaint as barred by laches. On appeal the court vacated the dismissal and remanded, holding that there were disputed issues of material fact with respect to laches that precluded dismissal. P then filed suit alleging that he was a co-inventor of the catheter the reexamination claims covered. After a bench trial, the court held that the evidence did not establish co-inventorship. It held that P needed to establish is that he conceived some important element or some important claim that is claimed in the patent but that P was consulted, P made some contribution, doesn't in and of itself rise to the level of conception particularly if he's doing nothing more than explaining to the inventors what the then state of the art was and supplying a product to them for use in their invention. The court held that the evidence did not establish co-inventorship. P appealed.