Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.
Docket: No. 01-1198, 01-1239
Court: Court of Appeals for the Federal Circuit; June 14, 2001; Federal Appellate Court
St. Jude Medical, Inc. and others (St. Jude) filed a motion to dismiss or clarify the issues on appeal concerning a patent infringement case involving three patents. The district court previously issued orders regarding claim construction for these patents, notably determining on December 19, 2000, that it could not construe the “third monitoring means” of United States Patent 4,572,191 (the ’191 patent) due to a lack of disclosed structure in the specification. The parties jointly requested a final judgment under Fed. R. Civ. P. 54(b), agreeing that if the court's construction was correct, the claims of the ’191 patent were invalid as a matter of law, thus negating the need for trial on this issue. The district court granted a declaratory judgment in favor of St. Jude, declaring claims 1-14 of the ’191 patent invalid and dismissing Cardiac Pacemakers, Inc.'s (CPI) infringement claim with prejudice. St. Jude’s counterclaims for unenforceability and non-infringement were dismissed without prejudice but could be reinstated depending on the outcome of CPI’s appeal regarding claim construction. St. Jude's motion aimed to clarify the appeal issues, suggesting that if the appeal solely concerned the invalidity of the ’191 patent and the claim construction of the “third monitoring means,” CPI's appeal would be valid while St. Jude’s cross-appeal could be dismissed. CPI concurred that the sole issue for review should be the invalidity of the ’191 patent and agreed that St. Jude's cross-appeal should be dismissed, as the judgment was not adverse to St. Jude. The court granted St. Jude's motion in part, dismissing St. Jude’s cross-appeal and ordering that each party bear its own costs for the appeal (no. 01-1239).