                    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




                                           05-1280, -1281, -1282




                        ADVANCED CARDIOVASCULAR SYSTEMS, INC.
                           and GUIDANT SALES CORPORATION,

                                                                        Plaintiffs-Appellees,

                                                         v.

                MEDTRONIC VASCULAR, INC. and MEDTRONIC USA, INC.,

                                                                     Defendants-Appellants.

-------------------------------------------------------------------------------------------------------------

                                    MEDTRONIC VASCULAR, INC.,

                                                                    Plaintiff-Appellant,

                                                         v.

                BOSTON SCIENTIFIC CORPORATION and
 BOSTON SCIENTIFIC SCIMED, INC. (formerly known as Scimed Life Systems, Inc.),

                                                                        Defendants-Appellees,

                                                        and

                                               MEDINOL LTD.,

                                                                       Defendant-Appellee.
----------------------------------------------------------------------------------------------------------------

                                    MEDTRONIC VASCULAR, INC.,

                                                                      Plaintiff-Appellant,

                                                         v.

                BOSTON SCIENTIFIC CORPORATION and
 BOSTON SCIENTIFIC SCIMED, INC. (formerly known as Scimed Life Systems, Inc.),

                                                                      Defendants-Appellees.

                                    _________________________

                                     DECIDED: May 26, 2006
                                   __________________________


Before MAYER, LOURIE, and BRYSON, Circuit Judges.

PER CURIAM.

         Medtronic Vascular, Inc. and Medtronic USA, Inc. (collectively “Medtronic”)

appeal the final judgments of the United States District Court for the District of

Delaware.        Medtronic seeks review of (1) a grant of summary judgment of non-

infringement in favor of Advanced Cardiovascular Systems, Inc. and Guidant Sales

Corp. (collectively “ACS”) and a finding that its state law claims are barred by the statute

of limitations, Medtronic Vascular, Inc. v. Advanced Cardiovascular Systems, Inc., 98-

CV-80 (D. Del. Feb. 2, 2005); (2) a grant of summary judgment of non-infringement in

favor of Boston Scientific Corp., Boston Scientific Scimed, Inc. (collectively “BSC”), and

Medinol, Ltd. (“Medinol”), Medtronic Vascular, Inc. v. Boston Scientific Corp., 98-CV-478

(D. Del. Feb. 2, 2005); (3) a grant of summary judgment of non-infringement in favor of

BSC, Medtronic Vascular, Inc. v. Boston Scientific Corp., 04-CV-34 (D. Del. Feb. 2,

2005). We affirm.



05-1280, -1281, -1282                                    2
       Medtronic owns U.S. Patent No. 5,292,331 (“’331 patent”), which recites a stent

device. It also owns U.S. Patent Nos. 5,674,278 (“’278 patent”), 5,879,382 (“’382

patent”), and 6,344,053 (“’053 patent”), which recite various stent devices and methods

for delivery and manufacture of a plurality of those devices. In the three actions above,

Medtronic sued ACS, BSC, and Medinol for infringement of all four patents. Medtronic

also sued ACS under various state law claims, including misappropriation of trade

secrets, breach of contract, actual fraud, unjust enrichment, and unfair competition.

After issuing its three claim construction orders (the substance of all of which is

identical), the trial court granted summary judgment of non-infringement as to all

defendants, and found all of Medtronic’s state law claims barred by the statute of

limitations. Medtronic appeals these judgments, and challenges the trial court’s claim

construction of “stent,” “circular member,” “stent member,” “ring,” and “endovascular

support member.”∗      Moreover, it seeks review of the trial court’s finding that the




       ∗
               Representative claims from the ’331 and ’053 patents, in pertinent part,
provide for:

               1. A stent for implantation within a vessel within the human body
               comprising a plurality of N substantially straight segments of wire-
               like material, each segment having a first and second ends wherein
               the first end of a first segment is connected to the first end of a
               second segment, the second end of the second segment is
               connected to the second end of the third segment, the first end of
               the third segment is connected to the first end of the fourth
               segment, and so on until the second end of the Nth segment is
               connected to the second end of the first segment . . . .

’331 patent, col. 7, ll. 1-11 (emphasis added).

               1. A balloon-expandable stent comprising:
               a plurality of generally sinusoidally-shaped, plastically deformable
               rings . . .


05-1280, -1281, -1282                        3
“substantially straight segments” of each stent are connected only at their “ends” by

“peaks” or “turns,” and that the “peaks” or “turns” may not have any additional elements.

See, e.g., Medtronic Vascular, Inc. v. Advanced Cardiovascular Systems, Inc., 98-CV-

80, slip op. at 6-9 (D. Del. Jan. 5, 2005) (“Claim Construction Order”). Beginning with

claim construction, we address each of the challenged determinations in turn, and find

no error in them.

       Claim construction is a question of law that we review de novo. Vitronics Corp v.

Conceptions, Inc., 90 F.3d 1576, 1578 (Fed. Cir. 1996). We construe claim language in

accordance with its ordinary meaning, as defined by a person having ordinary skill in the

art. See Phillips v. AWH Corp., 415 F.3d 1303, 1311-19 (Fed. Cir. 2005) (en banc).

This inquiry is informed by the context of the entire patent, including the specification

and the other claims, and, where relevant, the prosecution history. Id. The trial court

construed “stent” as “a device implanted to maintain the patency of a vessel.” Claim

Construction Order, slip op. at 2.       Medtronic argues that it erred by improperly

incorporating a functional limitation into the construction, i.e., maintaining patency of a

vessel. We disagree. The invention is described as an “endovascular support device.”

E.g., ’331 patent, col. 3, l. 21 (emphasis added). In addition, the specification explicitly

states that stents are devices “for mechanically keeping the affected vessel open.” Id.




              each ring comprising substantially straight segments oriented
              generally parallel to a longitudinal axis . . .
                    each segment having a first end and a second end, with a
                    first end of a first segment connected to a first end of a
                    second segment by a first turn;
                    ....

’053 patent, col. 6, ll. 41-52 (emphasis added).


05-1280, -1281, -1282                        4
at col. 2, ll. 17-18. Because the trial court’s claim construction is consistent with the

specification and the ordinary meaning of the term “stent,” we find it to be correct.

       We also find that the trial court properly construed “circular member,” “stent

member,” “ring,” and “endovascular support member” to have the same meaning as

“stent.” As the trial court found, none of these terms are present in the specifications.

Where they are used in the claims, however, they are employed in a manner analogous

to and interchangeable with the term “stent.” See, e.g., ’331 patent, col. 8, ll. 6-21; ’278

patent, col. 6, ll. 53-63; ’382 patent, col. 6, ll. 45-57; ’053 patent, col. 7, ll. 10-27.

Because the claims establish that Medtronic used the challenged terms synonymously

with “stent,” the trial court’s construction is correct.

       Next, Medtronic argues that the trial court improperly found that, during the

prosecution of the ’331 patent, it disclaimed additional elements on the “ends” or

“peaks” of the “substantially straight segments” in its stents. It further argues that the

trial court improperly applied this “no additional elements” disclaimer against the ’278,

’382, and ’053 patents. We disagree on both accounts.

       A clear and unmistakable statement of disavowal in the prosecution history may

narrow claim scope. See Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1358

(Fed. Cir. 2003). During prosecution of the ’331 patent, the inventor, Michael Boneau,

argued, inter alia, that his invention was allowable over prior art, i.e., U.S. Patent No.

4,776,337 (“Palmaz”), because the “substantially straight segments” of his stents were

connected to form “ends,” or, as he called them during prosecution, “peaks.” He stated

that a “peak” must be “the very top and the very bottom” of a stent. Adding additional

elements to the “peaks” would cause those elements to no longer be the peak of a




05-1280, -1281, -1282                           5
stent, i.e., the very top or the very bottom. See generally Claim Construction Order, slip

op. at 7 n.25.    We find these statements to constitute a clear and unmistakable

disavowal of additional elements on its stent “ends” or “peaks.”

       We find no merit in Medtronic’s argument that the Patent and Trademark Office

Board of Patent Appeals and Interferences’ decision, reversing the examiner’s rejection

of some claims in the ’331 patent, precludes our finding such a disavowal. For support,

Medtronic cites the following from the board’s decision:

      Viewing the stent shown by Palmaz in Fig. 2b as a whole, it is readily
      apparent that what is depicted is a series of peaks and valleys on each
      end. We can think of no circumstances under which the artisan,
      consistent with the appellant’s specification, would call the valleys on one
      end “peaks” and ignore the remaining structure of Palmaz as the examiner
      apparently proposes to do.

(emphasis in original). It is clear from the above statement that the board rejected the

examiner’s section-by-section deconstruction of the stent in Palmaz:




Instead, it considered the Palmaz stent as a whole, with “peaks” occurring where “upper

peaks” are labeled (and at the bottom of the above diagram). Therefore, the board

accepted the notion, at least implicitly, that, although not expressly recited in the claim

language, both Palmaz and the invention in the ’331 patent have “peaks.” Because

Boneau clearly stated that the peaks in his invention have no additional elements, the



05-1280, -1281, -1282                       6
trial court properly incorporated that limitation into its construction of the ’331 patent.

Even if such a broad disclaimer was not necessary to overcome Palmaz,

       there is no principle of patent law that the scope of a surrender of subject
       matter during prosecution is limited to what is absolutely necessary to
       avoid a prior art reference that was the basis for an examiner's
       rejection . . . . [Where patentees surrender more than necessary], we
       [hold] the patentees to the scope of what they ultimately claim, and we
       [do] not allow[] them to assert that claims should be interpreted as if they
       had surrendered only what they had to.

Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361-62 (Fed. Cir. 2005) (citing Fantasy

Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1114-15 (Fed. Cir. 2002);

Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999)).

       We further find that the disclaimer in the ’331 patent applies equally against the

’278, ’382, and ’053 patents.     “When multiple patents derive from the same initial

application, the prosecution history regarding a claim limitation in any patent that has

issued applies with equal force to subsequently issued patents that contain the same

claim limitation.” Elkay, 192 F.3d at 980 (citations omitted). This holds even truer

where the patentee affirmatively links the meaning of the claims subject to the initial

disclaimer with claims in later issued patents. See id. The ’278 and ’382 patents both

use the same term “end” to describe the connection between the “substantially straight

segments.” Moreover, Medtronic affirmatively linked both patents to the ’331 patent

because it argued that its claims there were allowable “for at least the same reasons as

the parent application.”   Therefore, the disclaimer in the ’331 patent plainly applies

against the ’278 and ’382 patents.

       With respect to the ’053 patent, Medtronic correctly states that its claims do not

all use the term “end” to describe the connection between the “substantially straight




05-1280, -1281, -1282                       7
segments.” Instead, certain claims use “turn” or “curved member.” E.g., ’053 patent,

col. 6, l. 52. However, because the specification for the ’331 patent uses “peaks” and

“turns” synonymously, and “turn” and “curved member” are used in the ’053 patent

claims synonymously with “end,” we find that those claims embody the same “peak” or

“end” limitation as the ’331 patent, i.e., the disclaimer from the ’331 patent applies

against the ’053 patent. Our conclusion is further buttressed by the established rule of

claim interpretation that dictates that like terms should be construed consistently across

related claims. See Phillips, 415 F.3d at 1314.

       Having affirmed the trial court’s claim construction, we find no error in its grants

of summary judgment in favor of the defendants. With respect to all of the accused

devices, when each is viewed as a whole, i.e., as one stent, they do not have the

requisite “substantially straight segments” extending across the length of the stent. See

Claim Construction Order, slip op. at 6. Because of the absence of this limitation, the

accused devices do not infringe any of the patents-in-suit. Indeed, all of Medtronic’s

patents contain the “substantially straight segment” limitation. Alternatively, however,

even if we were to view each section or circular member within the accused devices as

an individual stent, thereby effectively avoiding application of the “substantially straight

segment” limitation for the purposes of summary judgment, there still can be no

infringement under the ’278, ’382, or ’053 patents. Under the deconstructed view of the

accused devices, the “end” of each individual section is connected to another section,

and, therefore, has additional elements. This causes the devices to fail to satisfy the

“no additional elements” limitation, as applied from Boneau’s disclaimer during

prosecution of the ’331 patent. Because prosecution history estoppel applies to this




05-1280, -1281, -1282                        8
limitation based on that disavowal, there also cannot be infringement under the doctrine

of equivalents. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535

U.S. 722 (2002).

       Finally, the trial court properly found Medtronic’s state law claims barred by the

statute of limitations. The statute of limitations for theft of trade secrets is “three years

[from] the date the misappropriation is discovered or by the exercise of reasonable

diligence should have been discovered.” Del. Code Ann. tit. 6, § 2006 (2006). The

patents-in-suit   were   initially    assigned   to   Boneau’s   company   Accutrix,   which

subsequently became ESS.             In 1992, ESS sold the Boneau patents to Medtronic’s

predecessor, AVE.        However, in a prior attempt to sell his technology, Boneau

confidentially disclosed proprietary information to ACS in 1989 or 1990. We conclude

that no reasonable fact-finder could find that reasonable diligence by Medtronic at the

time it purchased Boneau’s patents, in 1992, would not have uncovered Boneau’s

attempt to sell his technology to ACS or, ulitimately, revealed the proprietary

disclosures. Moreover, because ACS’ European patent application for the stent from

which Medtronic’s trade secret claim arises was published in 1993, and ACS disclosed

that stent in the United States in 1994 through publications and at conferences that both

ACS and Medtronic attended, Medtronic had, at a minimum, constructive knowledge of

the accused devices by 1994. Therefore, because Medtronic had at least constructive

knowledge, more than three years before filing suit against ACS in 1998, of all elements

necessary to bring a claim for theft of trade secrets, i.e., Boneau’s disclosures to ACS

and ACS’ acts giving rise to the claim, it is now barred from asserting that claim.




05-1280, -1281, -1282                            9
       With respect to the remaining state law claims, they are subject to a three year

statute of limitations period, which runs from the time of the alleged wrongful acts, i.e.,

about 1989 or 1990. See Del Code Ann. tit. 10, § 8106. However, the limitations period

may be tolled if the circumstances or facts surrounding the injury are “inherently

unknowable.” See Studiengesellschaft Kohle mbH v. Hercules, Inc., 748 F. Supp. 247,

252 (D. Del. 1990). Here, the facts surrounding Medtronic’s state law claims were

“inherently unknowable,” if ever, until 1994 at the latest. Therefore, Medtronic is barred

from asserting these claims as well.




05-1280, -1281, -1282                       10
