                NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
                  is not citable as precedent. It is a public record.

 United States Court of Appeals for the Federal Circuit


                                      05-1236

                          ARLAINE & GINA ROCKEY, INC.,

                                                    Plaintiff-Appellant,

                                          v.


                             CORDIS CORPORATION,

                                                    Defendant-Appellee.

                            ________________________

                             DECIDED: March 16, 2006
                            ________________________


Before MICHEL, Chief Judge, SCHALL, and GAJARSA, Circuit Judges.

GAJARSA, Circuit Judge.

      Arlaine & Gina Rockey, Inc. ("AGR") appeals from the district court's grant of

summary judgment in favor of Cordis Corp. ("Cordis"). The district court found that

AGR is not entitled to royalties under its licensing agreement with Cordis because the

use of Cordis' accused device (the "Palmaz-Schatz" stent) is not covered by claim 2 of

AGR's stent patent, U.S. Patent No. 4,641,653. On July 1, 2002, AGR filed this action

in the Circuit Court for Miami-Dade County, Florida, alleging breach of the licensing

agreement, breach of an implied duty to commercialize, and breach of the duty of good

faith and fair dealing. The case was removed to federal court pursuant to 28 U.S.C.
§ 1441. The district court denied AGR's remand request but did certify the question for

interlocutory review. This court denied AGR's petition for interlocutory review of the

district court's refusal to remand to the state court. See Arlaine & Gina Rockey, Inc. v.

Cordis Corp., 68 Fed. Appx. 185 (Fed. Cir. 2003).          Subsequently, the trial court

conducted a Markman hearing and issued a claim construction order. AGR then filed a

motion for reconsideration of the claim construction while Cordis submitted a motion for

summary judgment. The district court denied AGR's motion for reconsideration of the

claim construction and granted summary judgment in favor of Cordis. AGR filed a

timely appeal. For the reasons stated below, we affirm.

                                     BACKGROUND

       During the late 1970's, Dr. Arthur G. Rockey experimented with methods of

treating problems with blood vessels and the gastrointestinal tract using medical

devices called stents. From this research, he applied for and received United States

Patent Nos. 4,501,264, 4,641,653, and 4,763,653 (collectively, "the Rockey Patents"),

all of which he later assigned to AGR. The Rockey Patents cover various medical

devices and procedures involving stents.        This appeal concerns only Patent No.

4,641,653 ("'653 patent").

       In 1995, AGR granted Cordis an exclusive world-wide license to the Rockey

Patents, which included inter alia the right to sell devices, the use of which is protected

by AGR's method claims. As compensation, Cordis agreed to pay AGR an advance or

pre-paid royalty of two-million dollars and a 10% royalty on all related products sold

exceeding twenty-million dollars.     AGR claims that Cordis breached the license




05-1236                                     2
agreement by selling the accused device, the Palmaz-Schatz stent, without paying

royalties thereon.

         Claim 2 of the '653 patent is directed to a method for inserting a stent into a blood

vessel, manipulating the stent into position, and expanding it to the full diameter of the

vessel. The stent remains in place due to the frictional forces created by the expanded

device against the blood vessel wall, and helps to maintain an open passageway in a

diseased vessel.

         Likewise, the Palmaz-Schatz stent is used in a similar manner.           There are,

however, important differences. The Palmaz-Schatz stent is a lattice-like cylinder that is

delivered to a desired location within the blood vessel and then radially expanded by an

internal balloon. The expanding balloon causes permanent deformation of the latticed-

steel cylinder.    The metal of the stent retains its new shape, just as a paper clip

maintains its new shape after bending. The cylinder is, of course, an integral part of the

stent.

         In contrast, the '653 patent illustrates the use of a stent that has a different

means of maintaining itself in a permanently expanded configuration.             Rather than

relying on mechanical deformation of a steel-lattice, the Rockey patent relies on the

introduction of a slowly-hardening substance. In a typical embodiment this is a gel that

cross-polymerizes and slowly increases in rigidity, until it sets in a permanently rigid

conformation. These stents are typically referred to as "Gastra" stents.

         Based on the claim construction, the district court found that the use of the

Palmaz-Schatz stent does not infringe the '653 patent and that therefore no additional




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royalties were due to AGR pursuant to the license. Thus, the district court granted

summary judgment in favor of Cordis. AGR appeals this decision.

                                     JURISDICTION

       The Federal Circuit has exclusive jurisdiction over appeals from a district court's

final decision when the "jurisdiction of that court was based, in whole or in part, on

section 1338." 28 U.S.C. § 1295(a). Section 1338 provides that the "district courts shall

have original jurisdiction of any civil action arising under any Act of Congress relating to

patents." 28 U.S.C. § 1338(a).

       AGR premised its cause of action against Cordis on a licensing agreement,

which is a matter of state contract law.1 The court must determine whether or not

jurisdiction is appropriate. See In re Compagnie Generale Maritime, 993 F.3d 841, 848

(Fed. Cir. 1993) (stating that courts can raise issues of subject matter jurisdiction sua

sponte at any time). In order to prevail on its claim for royalties, AGR must establish

entitlement under the contract. This court has jurisdiction under section 1295 when "the

plaintiff's right to relief necessarily depends on resolution of a substantial question of

federal patent law." U.S. Valves, Inc. v. Dray, 212 F.3d 1368, 1372 (Fed. Cir. 2000)

(quoting Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 809 (1988)). To

prevail in its contract action for royalties, AGR must show that the use of Cordis'

products was infringing the patent. Id. As a result, AGR's right to relief depends on the

resolution of a substantial question arising under the patent law. Id. Therefore, this




       1
            AGR alleges other counts as well, but these also involve issues of state
law, and none would be sufficient to provide a basis for § 1338 jurisdiction. Thus, this
case does not involve issues of supplemental jurisdiction under § 1367(a).


05-1236                                      4
court has jurisdiction because the underlying cause of action arises under patent law.

28 U.S.C. § 1338(a).

                                     DISCUSSION

      At issue in this appeal is whether the use of the Palmaz-Schatz stent infringes

the '653 patent.   AGR argues that the district court erred by improperly importing

limitations of the preferred embodiment into the claims in its claim construction and that

under a proper construction, there exist genuine issues of material fact regarding

infringement.

      We review a grant of summary judgments de novo. Ethicon Endo-Surgery v.

U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998).        Summary judgment is

applied when there is no genuine issue of material fact and the moving party is entitled

to judgment as a matter of law. Fed. R. Civ. Pro. 56(c); Ethicon, 149 F.3d at 1315.

Summary judgment may be granted when no "reasonable jury could return a verdict for

the nonmoving party." Ethicon, 149 F.3d at 1315 (quoting Anderson v. Liberty Lobby,

Inc., 477 U.S. 242, 248 (1986)). In order to determine whether summary judgment was

appropriately granted, we view the evidence in the light most favorable to the

nonmoving party. Id.

      Determining patent infringement is a two-step process consisting of the court

construing the claims and then comparing the allegedly infringing device to the properly

construed claims. See Research Plastic Inc., v. Fed. Packaging Corp., 421 F.3d 1290,

1295 (Fed. Cir. 2005). The first step, claim construction, is a matter of law, which we

review de novo. Id. The second step is typically a factual question, which we review for

clear error; "however, where the factual inferences are material to the grant of summary




05-1236                                     5
judgment, we review them to ascertain whether there is a genuine issue of material

fact." Id.

A.     Claim Construction

       To construe claims, we first consider the ordinary and customary meaning of the

claim language. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).

The claim's "ordinary and customary meaning" is the reading a person of ordinary skill

in the art would give the claim at the time of the invention. Id. at 1313. The person of

ordinary skill in the art should read the claim term "not only in the context of the

particular claim in which the disputed terms appears, but in the context of the entire

patent, including the specification." Id. Claim 2 of the '653 patent reads as follows:

       A method of treating an area of a body vessel, comprising the steps of:
             [1] introducing a catheter with a collapsed inflatable balloon and a
             collapsed sleeve encircling the balloon on its end into the vessel at
             a point remote from the area to be treated;
             [2] manipulating the catheter axially along the vessel to cause the
             balloon and sleeve to enter the area to be treated;
             [3] inflating the balloon by introducing fluid under pressure into the
             balloon through a tube of the catheter in a manner wherein the
             sleeve surrounding the balloon is radially expanded towards the
             wall of the vessel;
             [4] providing in the sleeve a material which increases in rigidity after
             expansion of said balloon;
             [5] maintaining said balloon in an expanded condition in the vessel
             while said sleeve increases in rigidity; and
             [6] thereafter removing the balloon and catheter from the vessel
             and allowing the sleeve to remain in the area to be treated

(emphases added, bracketed numbers added)

       AGR argues that the district court's claim construction was not justified and urges

us to adopt a different claim construction. The district court defined "providing in the

sleeve a material which increases in rigidity after expansion of said balloon" to mean

"supply[ing] in the sleeve a material that is separate and distinct from the sleeve itself."



05-1236                                      6
It rejected AGR's argued-for construction that this limitation somehow means that the

sleeve has been pre-formed with a material that increases in rigidity after the balloon

expansion. Rather, the district court held that the limitation requires the addition of a

material to the stent at some point in the process.

       When interpreting the claims, we must read them "'in view of the specification, of

which they are a part.'"     Phillips, 415 F.3d at 1315 (quoting Markman v. Westview

Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995) (en banc)). In interpreting the '653

claim, the district court considered the intrinsic evidence contained in the patent

specification to determine the meaning of the term "provided in." AGR's argument that

the sleeve has been pre-formed with the material that increases in rigidity is without

merit. The written description establishes that if the inventor intended to claim that the

material was part of the invention, he would not have used the term "providing." In a

description of one of the preferred embodiments, the specification speaks of the "sleeve

unit . . . including the ring balloons," which are intended to be filled with fluid, being

"provided with sufficient radiopaque material . . . ." '653, col. 4, ll. 43-45 (emphasis

added). Moreover, in another preferred embodiment, the specification speaks of the

"sleeve space . . . contain[ing] a fluid plastic material . . . which is caused to become

solidified . . . ," and "introduc[tion] into the sleeve space" of such material. Id, col. 6, ll.

22-26 (emphasis added). In short, the specification makes clear that in drafting his

claims, when the patentee used the word "providing"—a word that like "introduc[ing]" or

"supplying" denotes the addition of a separate substance into the stent—he did so

deliberately, and not through an accident of quirky or idiomatic usage. This conclusion




05-1236                                        7
can be drawn from the fact that when he meant to convey the preexistence of a material

in the sleeve he used an appropriate verb, such as "contain[ing]." Id.

       Similarly, when Dr. Rockey wanted to convey the idea "formed of a material" he

so stated specifically. In a description of one of the embodiments, the patent states that

the "balloon . . . is formed of any suitable plastic or rubber material." Id., col. 6, ll. 7-9

(emphasis added). In another example, the specification teaches that an "outer sleeve

wall . . . may be formed of Dacron" and an "inner wall . . . may be formed of Teflon." Id.,

col. 6, ll. 16-17 (emphasis added). Finally, the patent teaches that "the sleeve . . . is

preferably formed of relatively inelastic material." Id., col. 5, ll. 52-53 (emphasis added).

Thus, Rockey used the term "formed of" throughout the patent, yet specifically claimed

the method of "providing in" for the claim involving the material.          Considering this

intrinsic evidence, we agree with the district court's construction of the fourth claim

limitation.

B.     Applying the Claim Construction to the Accused Device

       In light of this claim construction, we hold that the district court did not err in

finding that there is no genuine issue of material fact whether the use of the Palmaz-

Schatz stent is covered by the '653 patent. The district court construed the method of

"providing in . . . a material" to mean "supplying in . . . a material." The use of the

Palmaz-Schatz stent does not satisfy this limitation. Unlike the material added in the

method described in the '653 patent, the Palmaz-Schatz stent steel-cylinder lattice is

part of the stent and is not "introduced" or "supplied."         No reasonable jury could

conclude otherwise. Therefore, use of the Palmaz-Schatz stent does not infringe the




05-1236                                       8
'653 patent. Thus, Cordis is not subject to royalty payments pursuant to the terms of

the license agreement for the Palmaz-Schatz stent.

C.     Doctrine of Equivalents

       Finally, we address AGR's doctrine of equivalents argument. AGR asks this

court to accept the proposition that the limitation of "providing . . . a material" is

equivalent to a method in which no material has been provided in accordance with the

required step. This argument is without merit because the application of the doctrine of

equivalents in this situation would vitiate the "providing in" limitation. Pfizer, Inc. v. Teva

Pharms. USA, Inc., 429 F.3d 1364, 1379 (Fed. Cir. 2005).              AGR argues that the

"provided in" limitation is extraneous, meaning that it has little significance to the patent.

Under the all-elements rule, however, there are no extraneous limitations. See Warner-

Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997) ("Each element

contained in a patent claim is deemed material to defining the scope of the patented

invention . . . ."). Thus, the district court did not commit error.

       Because the district court did not err in its claim construction and correctly

compared the asserted claim with the accused device, we affirm.




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