IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELA WARE
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`EDWARDS LIFESCIENCES AG and
`EDWARDS LIFESCIENCES LLC,
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`Plaintiffs,
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`v.
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`COREVALVE, INC. and,
`MEDTRONIC COREY ALVE, LLC
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`Defendants.
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`C.A. No. 08-91-GMS
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`I.
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`INTRODUCTION
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`MEMORANDUM
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`In this patent infringement action, plaintiffs Edwards Lifesciences AG and Edwards
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`Lifesciences LLC (collectively, "Edwards" or "the plaintiffs") allege that a medical device
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`manufactured by defendants Core Valve, Inc. and Medtronic CoreValve, LLC ("CoreValve")
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`infringe the asserted claim of the patent-in-suit. (D.!. 1.) The court held an eight-day jury trial in
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`this matter on March 23 through April 1, 2010. (D.I. 326-333.) At trial, CoreValve properly
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`moved for judgment as a matter of law ("JMOL") on a number of grounds pursuant to Rule 50(a)
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`of the Federal Rules of Civil Procedure (see D.I. 303-304, 308, and 310), and the court denied
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`CoreValve's motions. (See Tr. 1264-70.)
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`On April 1, 2010, the jury returned a unanimous verdict in favor of Edwards on all
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`claims. The jury found that CoreValve's Generation 3 ReValving System (the "Gen 3" device)
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`directly infringed claim 1 of United States Patent No. 5,411,552 ("the '552 Patent"), the only
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`asserted claim in this case. (D.l. 313.) The jury further found that CoreValve's infringement
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`was willful, and rejected CoreValve's claim of non-enablement with respect to the asserted
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 1 of 33
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`claim. (Id.) The jury awarded Edwards $72,645,555 in lost profits and $1,284,861 in reasonable
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`royalties.
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`(Id.) The court entered judgment on the verdict on May 4, 2010.
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`(D.L 324.)
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`Presently before the court are the parties' post-trial motions.! Having considered the entire
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`record in this case, the substantial evidence in the record, the parties' post-trial submissions, and
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`the applicable law, the court will deny all the parties' post-trial motions with the exception of:
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`Edwards' motion for pre-judgment and post-judgment interest (D.1. 344), which the court will
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`grant; and Edwards' motion for permanent injunction and accounting (D.1. 356), which it will
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`grant in part and deny in part. The court's reasoning follows.
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`II.
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`BACKGROUND OF THE TECHNOLOGY
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`The patent-in-suit relates to medical device technology. Specifically, the '552 Patent
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`relates to a "valve prosthesis, preferably a cardiac valve prosthesis, for implantation in the body .
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`. .. " ('552 Patent, col. 1, 11.13-15.) The object of the invention, and the key innovation upon
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`which the parties focused at trial, is to provide a valve prosthesis that can be implanted in the
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`body without the need for surgical intervention, but rather through use of a catheter. With
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`respect to cardiac valves, the invention thus permits a valve to be implanted without the need for
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`open heart surgery and the risks that come with such surgery. The claimed prosthesis comprises:
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`"A collapsible elastical valve which is mounted on an elastic stent, the elastical valve having a
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`plurality of commissural points" where the valve is attached to the stent. (,552 Patent, claim 1.)
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`Relevant to the pending motions, the asserted claim requires that the stent include "cylindrical
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`I These motions are: CoreValve's Renewed Motion for Judgment as a Matter of Law (D.I. 318),
`CoreValve's Motion for a New Trial or Alternatively to Amend Judgment (D.l. 320), Edwards' Motion for Attorney
`Fees (D.I. 339), Edwards' Motion for Enhanced Damages Pursuant To 35 U.S.C. § 284 (D.1. 341), Edwards' Motion
`for Prejudgment and Post judgment Interest (D.l. 344), CoreValve's Motion to Stay Judgment Pending Post-Trial
`Motions (D.1. 348), Edwards' Motion for Permanent Injunction, Accounting and Related Relief (D.1. 356),
`CoreValve's Local Rule 7.I.3(c)(2) Motion to Strike (D.1. 391), and CoreValve's Motion to Supplement Court
`Record (D.1. 417).
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`2
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 2 of 33
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`support means" and "a plurality of commissural supports projecting from one side of the
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`cylindrical support means in a direction generally parallel to the longitudinal axis thereof." (Id.)
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`III. DISCUSSION
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`A.
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`Renewed JMOL Motions
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`To prevail on a renewed motion for judgment as a matter of law following a jury trial and
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`verdict, the moving party '''must show that the jury's findings, presumed or express, are not
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`supported by substantial evidence or, if they were, that the legal conclusion(s) implied [by] the
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`jury's verdict cannot in law be supported by those findings.'" Pannu v. Iolab Corp., 155 F.3d
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`1344, 1348 (Fed. Cir. 1998) (quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d
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`888, 893 (Fed. Cir. 1984)). "Substantial evidence" is defined as "such relevant evidence from
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`the record taken as a whole as might be accepted by a reasonable mind as adequate to support the
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`finding under review." Perkin-Elmer Corp., 732 F.2d at 893.
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`The court should only grant the motion "if, viewing the evidence in the light most
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`favorable to the nonmovant and giving it the advantage of every fair and reasonable inference,
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`there is insufficient evidence from which a jury reasonably could find liability." Lightning Lube,
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`Inc. v. Wifco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993) (citing Wittekamp v. Gulf Western Inc.,
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`991 F.2d 1137, 1141 (3d Cir. 1993)). "In determining whether the evidence is sufficient to
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`sustain liability, the court may not weigh the evidence, determine the credibility of witnesses, or
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`substitute its version of the facts for the jury's version." Lightning Lube, 4 F.3d at 1166 (citing
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`Fineman v. Armstrong World Indus., Inc., 980 F.2d 171, 190 (3d Cir. 1992)). Rather, the court
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`must resolve all conflicts of evidence in favor of the non-movant. Williamson v. Consolo Rail
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`Corp., 926 F.2d 1344, 1348 (3d Cir. 1991); Perkin-Elmer Corp., 732 F.2d at 893.
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`3
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 3 of 33
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`"The question is not whether there is literally no evidence supporting the party against
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`whom the motion is directed but whether there is evidence upon which the jury could properly
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`find a verdict for that party." Lightning Lube, 4 F.3d at 1166 (quoting Patzig v. 0 'Neil, 577 F.2d
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`841, 846 (3d Cir. 1978)). In conducting such an analysis, "the court may not determine the
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`credibility of the witnesses nor 'substitute its choice for that of the jury between conflicting
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`elements of the evidence.'" Syngenta Seeds, Inc. v. Monsanto Co., 409 F. Supp. 2d 536, 539 (D.
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`Del. 2005) (quoting Perkin-Elmer Corp., 732 F.2d at 893).
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`1.
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`"Projecting"
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`CoreValve asserts that it is entited to judgment as a matter of law ("JMOL") because its
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`accused device does not meet the limitation of the asserted claim "projecting from one side of the
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`cylindrical support means in a direction generally parallel to the longitudinal axis thereof." Here,
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`a brief review of the discussions surrounding this phrase during the claim construction process
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`illustrates that CoreValve's renewed JMOL motion on this issue is actually an effort to reopen
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`claim construction and grant Core Valve summary judgment based on a construction that the
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`court never adopted. Initially the parties offered these proposed constructions for the phrase:
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`Edwards: The commissural supports project CoreValve: Extending away from one end of
`from one side of the cylindrical support means
`the cylindrical support means in a direction
`in a direction generally parallel
`to
`the generally parallel to the longitudinal axis of the
`longitudinal axis of the cylindrical support cylindrical support means
`means, namely, the commissural supports may
`not necessarily be parallel to that longitudinal
`axis in a strict geometric sense
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`(D.1. 45 at 12 (emphasis added).) The parties' proposed constructions differed in at least two
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`respects.
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`First, Edwards' construction included language (specifically, everything after
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`"namely") reminiscent of the language they proposed in their construction of the term
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`4
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 4 of 33
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`"cylindrical." Second, whereas Edwards' proposed construction left unaltered the "project[ing]
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`from one side" claim language, Core Valve proposed a construction that replaced "projecting"
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`with "extending away" and "one side" with "one end."
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`With respect to the latter difference, CoreValve's claim construction answering brief
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`stated that its proposed construction "is important to specify that the supports do not extend from
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`a side of the cylindrical support means, but rather from its end." (D.!. 64 at 16 (emphasis in
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`original).) Edwards took issue with CoreValve's proposed "extending away from one end"
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`construction in its answering brief. Edwards argued that '" [e ]xtending away' is inaccurate
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`because a portion of the commissural supports in the preferred embodiment shown in Figure 2
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`overlap and thus do not extend away from one end of the cylindrical support means." (D.L 62 at
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`14.) At the Markman hearing, Edwards stated that the dispute regarding the "extending away
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`from one side" limitation was over "a very minor detail" (id. at 30-31), and CoreValve agreed
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`that their positions on the meaning of this phrase were "very close." (DJ. 100 at 74.) Edwards
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`did repeat its opposition to the "extending away" limitation as "an unnecessary limitation which
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`isn't there." (Id. at 30.) CoreValve's sole statement regarding its "extending away" proposal at
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`the hearing was:
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`Now, [Edwards' counsel] didn't like the fact that we said extending away.
`We were trying to give another word for projecting. If the parties want to
`use projecting, that's probably fine with us as well. We didn't intend to
`change anything by "projecting."
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`(Id. at 74.) No mention was made between the distinction between "one end" and "one side,"
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`nor did Core Valve press the court further to adopt its "extending away construction," despite the
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`fact that Edwards had specifically repeated its opposition to CoreValve's proposaL
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`Given the parties' indication that they did not view the differences between their
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`5
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 5 of 33
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`proposals as substantial, the court adopted a construction of the term that left the claim language
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`intact and gave the term its plain and ordinary meaning. (D.1. 271 at 3.) The court noted that the
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`parties' proposed constructions were "quite similar." (Id.) Neither CoreValve nor Edwards filed
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`a motion for reconsideration or clarification regarding the court's construction of this term.
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`CoreValve filed no motions in limine asking the court to clarify or further limit the meaning of
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`this term. The term was not mentioned at all in the pretrial conference.
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`(See D.1. 276.)
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`CoreValve did not file any pre-trial objections with the court asserting that the infringement
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`analysis for this term in Dr. Nigel Buller's expert report violated the court's claim construction
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`order, nor does CoreValve argue now that Dr. Buller's testimony regarding the limitation at trial
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`differed from the analysis in his report. 2
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`Core Valve is now, in effect, asking the court to read its proposal into the court's
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`construction of the disputed term, and test the jury's verdict against that far more limiting
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`construction.
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`In support of its argument as to the unreasonableness of the jury's verdict,
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`CoreValve cites dictionary definitions of "projecting" in an effort to establish the term's plain
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`and ordinary meaning, and then notes that there is nothing projecting from the top end of
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`CoreValve's device. These arguments are, in effect, an attempt to reopen claim construction for
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`the disputed term. At this stage in the proceedings, CoreValve's claim construction arguments
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`are untimely, and the court rejects its renewed JMOL motion on that basis alone.3 Edwards
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`2 To the best of the court's knowledge, the only time that CoreValve raised this claim term before trial was
`its letter request to file a motion for summary judgment (D.l. 129), in which CoreValve also attempted to relitigate
`the court's constructions of "cylindrical" and "cylindrical support means" (see section III.A.4, infra). The court
`denied that letter request and a related subsequent "Motion for Clarification" (see D.L 156) as untimely efforts to
`revisit claim construction. (See D.l. 149; D.I. 191.)
`3 Moreover, even if the court were to open claim construction for this term, the definitions Core Valve
`provided divorce the word "projecting" from the context in which it appears in the claims, and CoreValve's
`arguments gloss over the fact that the claim requires commissural supports projecting from one side rather than from
`one end of the support means.
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`6
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 6 of 33
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`specifically objected to CoreValve's "extending away" and "one end" limitations and noted that
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`Figure 2 showed overlapping supports. Despite this, Core Valve indicated at the Markman
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`hearing that it did not view its proposal as substantially different from Edwards'. If CoreValve
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`wished for the court to further clarify the plain and ordinary meaning of the term with respect to
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`their "extending away" and "one end" proposals, they could have insisted that the court rule on
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`their proposed construction instead of stating that their proposed construction would not change
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`the meaning of the term. Failing that, CoreValve could have filed a timely motion seeking
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`clarification of the court's construction as to this term.
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`The test is not how CoreValve or even the court would interpret the plain and ordinary
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`meaning of "projecting." Rather, the test is whether there is sufficient evidence to support the
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`jury's implicit finding that the commissural supports on CoreValve's device "project!] from one
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`side of the cylindrical support means/' given the plain and ordinary meaning of that phrase in the
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`context of the disputed claim. At trial, Dr. Buller gave testimony that provided a reasonable
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`basis for the jury to conclude that CoreValve's device meets the requirements of the disputed
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`claim term.4 CoreValve's effort to create a more specific and limiting meaning of this term and
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`test the jury's verdict against that meaning is untimely and unavailing.
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`4 Specifically, Dr. Buller used a photograph of CoreValve's device that was often used during trial to
`illustrate for the jury the location of the commissural points, commissural supports, and cylindrical support means.
`(See OJ. 337 at A894·96 (PTX 2135-2137.) Dr. Buller testified that the "top" portion of Core Valve's device as
`shown in PTX 2136·37 contained the commissural supports (Tr. 768:21·771:2; PTX 2137) while the "bottom"
`portion contained the cylindrical support means. (Tr. 769:24·25; PTX 2136.) He then explained, using the court's
`construction of the claim, how the commissural supports project from one side of the cylindrical support means, and
`how the commissural supports run generally parallel to the cylindrical support means. (Tr.771:5-773:23.) It is true
`that these supports overlap with the cylindrical support means but, as Edwards notes, this is consistent with the
`specification and drawings of the '552 Patent. (See '552 Patent, Fig. 2 & col. 5:9·28.) In any case, and as discussed
`above, CoreValve's proposal to further limit the meaning of the "projecting from one side" limitation is untimely.
`Moreover, CoreValve's effort to dismiss Dr. Buller's illustrations of CoreValve's device as "litigation(cid:173)
`inspired" are unavailing. CoreValve did not object when Edwards moved to have those drawings moved into
`evidence.
`(Tr. 1003:14·20.) Furthermore, and as Edwards notes, experts routinely highlight and explain the
`components of an accused device in light of the asserted claim limitations. Indeed, the court is puzzled as to how
`infringement could ever be shown if experts were not permitted to refer to the accused device.
`7
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 7 of 33
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`For similar reasons, the court rejects CoreValve's assertion that no reasonable jury could
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`find that CoreValve's commissural support project "in a direction generally parallel to the
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`longitudinal axis." CoreValve's argument depends on adopting a more limiting construction of
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`the claim term than was included in the court's Markman order. Specifically, it requires that the
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`"commissural supports" be limited so that the cells above the tabs that constitute the
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`commissural points are excluded. The court's claim construction order, however, contains no
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`such requirement.
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`Indeed, both parties agreed that the proper construction of "commissural
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`supports" is simply "portions of the stent that support the commissural supports of the valve."
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`(D.L 271 at 3.) CoreValve did not seek and the court did not impose a limitation excluding cells
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`above the tab from being part of the "commissural supports." As with the "projecting from one
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`side" portion of this limitation, Dr. Buller gave testimony that provided a reasonable basis for the
`jury to conclude that CoreValve's device meets the requirements of the disputed claim term.s
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`Consequently, the court denies CoreValve's renewed JMOL motion with respect to this
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`limitation.6
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`2.
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`Willful Infringement
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`CoreValve next argues that the evidence presented at trial was not sufficient to support
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`the jury's finding of willfulness. Under the rubric established by In re Seagate Tech., LLC,
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`5 See footnote 4, supra. Dr. Buller testified that the "portions of the stent that support the commissural
`points of the valve" (the court's construction of "commissural points") consists of "the structure ... that rises up
`from the cylinder support means to the top of the device." (Tr. 770:2-5.) Given the honeycomb-like structure of
`CoreValve's device, this structure runs along most of the length of the stent; as CoreValve's own witness stated:
`"The CoreValve stent has the commissural supports, supported in a honeycomb structure." (Tr. 1465:2-8.) Dr.
`Buller then testified that supporting structure, as a whole, runs in a direction generally parallel to the longitudinal
`axis even though there are curves within the structure. (See Tr. 771:22-773:23.) The jury could reasonably have
`accepted Dr. Buller's testimony.
`6 CoreValve also argues that Edwards cannot resort to the doctrine of equivalents ("DOE") to prove
`infringement of the "commissural supports" claim term due to prosecution history estoppels. (See 0.1. 335 at 9.)
`Since the jury found literal infringement of this claim, however, it did not (and did need to) determine DOE
`infringement. (See OJ. 313 at 2.) Consequently, the court finds that the DOE issue is moot.
`8
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 8 of 33
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`willful infringement requires first that the patentee show that the infringer acted despite an
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`objectively high likelihood that its actions constituted infringement. 497 F.3d 1360, 1371 (Fed.
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`Cir. 2007). The existence of this risk is "determined by the record developed in the infringement
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`proceeding." Id.
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`If the objective risk prong is satisfied, the patentee must then show that the
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`infringer either knew or should have known of this objective risk. Id By its nature, the issue of
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`willfulness in patent infringement hinges both on the fact finder's assessments of the credibility
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`of witnesses and on the fact finder drawing inferences from the evidence presented to it. "The
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`drawing of inferences, particularly in respect of an intent-implicating question such as
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`willfulness, is peculiarly within the province of the fact finder that observed the witnesses."
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`Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1225 (Fed. Cir. 2006). Since this case
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`was tried before a jury, the court will not lightly disturb the jury's finding of willfulness.
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`In support of its arguments for a JMOL of non-willfulness, CoreValve cites the testimony
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`of fact witnesses who testified as to the development of the Gen 3 device and their belief that the
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`device did not infringe. (See D.1. 335 at 11.) The jury was under no obligation, however, to
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`accept the testimony of CoreValve's witnesses. For instance, the jury was free to reject
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`and
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`apparently did reject - Mr. Bortlein's assertion that he designed the Gen 3 device so that it
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`contained no projecting commissural supports. (See D.I. 335 at 11 (citing Tr. 1035:4-1038:2).)
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`Assessments of such testimony fall squarely within the province of the jury. CoreValve also
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`cites the PTO's decision to grant CoreValve patents covering the Gen 3 device. While
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`Core Valve correctly notes that evidence of such patents is potentially relevant to the issue of
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`willfulness, it is not for the court to decide how much weight the jury should have given to
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`CoreValve's patents in this case. Moreover, as Edwards notes in its answering brief, the record
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`9
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 9 of 33
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`contains considerable evidence from which a jury could have inferred willfulness. (See D.L 369
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`at 10.) For these reasons, the court will deny CoreValve's renewed motion for JMOL on the
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`issue of willfulness.
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`3.
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`Non-Enablement
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`CoreValve next argues that no reasonable jury could have rejected Core Valve's non-
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`enablement defense to claim 1. Non-enablement is an invalidity defense that must be established
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`by clear and convincing evidence. E.g., Mentor HIS, Inc. v. Med. Device Alliance, Inc., 244 F.3d
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`1365, 1375 (Fed. Cir. 2001). To be enabling, the specification of a patent must teach those
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`skilled in the art how to make and use the full scope of the claimed invention without "undue
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`experimentation." E.g., Genentech, Inc. v. Novo Nordisk AJS, 108 F.3d 1361, 1365 (Fed. Cir.
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`1997).
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`CoreValve's motion confuses the standard under which enablement is determined by
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`discussing enablement in terms of attributes that must be enabled "to cover the Core Valve
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`device" rather than in terms of the language and scope of the actual claims. Specifically,
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`CoreValve argues:
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`[T]o cover the Core Valve device, claim 1 must encompass a device with
`"commissural supports projecting from one side . . . in a direction
`generally parallel" that is also (1) self-expanding, (2) suitable for use in
`humans, (3) suitable for delivery via minimally invasive techniques such
`as through the transfemoral artery, and (4) securable in the aortic annulus,
`like CoreValve's Gen 3.
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`(D.L 335 at 12-13 (emphasis added).) CoreValve then proceeded to argue that each of the
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`numbered attributes was not enabled by the '552 Patent. 7
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`7 Notably, CoreValve made no effort to argue that the '552 Patent did not enable "commissural supports
`projecting from one side ... in a direction generally parallel," which was the only language from the actual claims
`that appeared in this section of Core Valve's motion. CoreValve only argued that there was nothing "projecting" in
`10
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 10 of 33
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`CoreValve's recitation of what "claim 1 must encompass" in order "to cover the
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`Core Valve device" is a misleading characterization of what must be enabled under § 112. It is
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`the asserted claims rather than the accused device which must be "enabled" by the patent-in-suit.
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`See, e.g., Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 1306 (Fed. Cir. 2001). In this
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`case, the court did not construe the asserted claims to cover the four attributes of the accused
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`device that Core Valve raises in its non-enablement argument, and Core Valve does not appear to
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`make any effort to tie those attributes back to the actual claim language or to argue that actual
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`limitations appearing in the asserted claim are not enabled. While it is true that the specification
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`must enable the full scope of the asserted claim, there is no requirement that the claims must
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`cover all features of the accused device. As the Federal Circuit has explained:
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`The dispositive question of enablement does not tum on whether the
`accused product is enabled. Rather, "[t]o be enabling, the specification of
`the patent must teach those skilled in the art how to make and use the full
`scope of the claimed invention without undue experimentation."
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`Durel, 256 F.3d at 1306 (internal citation omitted).8
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`By that standard, since the court cannot discern from CoreValve's motion which
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`limitations of the asserted claims are purportedly not enabled, CoreValve's motion does not even
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`raise a colorable non-enablement defense against which the court can test the jury's verdict.
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`the '552 Patent's only example of a "self-expandable" device. Self-expansion is not, however, required by or
`mentioned in the asserted claim.
`S In Invitrogen Corp. v. Clontech Laboratories, Inc., the Federal Circuit explained the reasoning underlying
`this approach to enablement:
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`Enablement does not require the inventor to foresee every means of implementing an
`invention at pains of losing his patent franchise. Were it otherwise, claimed inventions
`would not include improved modes of practicing those inventions. Such narrow patent
`rights would rapidly become worthless as new modes of practicing the invention
`developed, and the inventor would lose the benefit of the patent bargain.
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`429 F.3d 1052, 1071 (Fed. Cir. 2005).
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`11
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 11 of 33
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`Certainly, considering the clear and convincing standard that non-enablement defenses must
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`meet, Core Valve has failed to show that no reasonable jury could conclude that claim 1 of the
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`'552 Patent is enabled.
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`4.
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`"Cylindrical support means"
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`The next ground upon which CoreValve moves for JMOL relates to the court's
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`construction of "cylindrical support means." CoreValve asked the court to revisit its
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`construction of this term repeatedly throughout the pre-trial process and during the trial itself.
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`CoreValve's repeated efforts to revisit claim construction led the court to warn Core Valve's
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`counsel at trial to "stop pushing the issue." (Tr. 1649:11-18.) CoreValve chose to ignore the
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`court's warning, and has once again raised the issue in their renewed JMOL motion. The court
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`will deny the motion as (another) untimely effort to reopen claim construction and test the jury's
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`verdict against a construction that did not appear in the court's Markman order.
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`The court will not comment further on the substance of the motion. Since attempts to
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`relitigate claim construction have become increasingly prevalent, however, the court feels it
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`necessary to layout the history behind CoreValve's efforts to revisit claim construction on this
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`Issue. The court's claim construction order specifically rejected CoreValve's proposed
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`constructions of "cylindrical support means" and "cylindrical," and specifically noted that the
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`court rejected CoreValve's suggestion that "cylindrical" as that word is used in the disputed
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`terms requires that the diameter be "constant along the longitudinal axis" as in the case of perfect
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`geometric cylinders. (See D.1. 109 at 2 & 4; D.1. 271 at 2 & 4.) CoreValve did not file a motion
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`for reargument during the ten day time frame imposed under Local Rule 7.1.5.9 Once that period
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`9 Local Rule 7.1.5 has since been amended to provide a fourteen day period for filing motions for
`reargument.
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`12
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 12 of 33
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`passed, the claim construction phase of the pre-trial process was complete.
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`Just a few weeks later, however, CoreValve attempted to revisit the constructions of
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`"cylindrical" and "cylindrical support means" in its letter request to file a motion for summary
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`judgment.
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`(D.1. 129.) Despite the court's specific instruction that cylindrical did not mean
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`"constant along the longitudinal axis" in the context of the disputed claims, CoreValve's letter
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`argued that the court's claim construction was "grounded" in the geometric definition of a
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`perfect cylinder with "straight parallel sides." (Id. at 2.) The court denied the letter request in an
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`order that concluded by stating that "the court agrees with the plaintiffs, and will deny, as
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`untimely, the defendant's request for reconsideration of the court's May 27, 2009 Markman
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`order." (See D.l. 149.)
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`Undeterred, CoreValve filed a "Motion for Clarification" (D.l. 156) that contained a
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`jumble of arguments stemming from CoreValve's insistence that "cylindrical" should be
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`construed as referring to its "ordinary meaning" of cylinder (id. at 3) as "a shape with straight
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`parallel sides." (Id. at 2.) CoreValve warned that if the court failed to "resolve" this issue, "the
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`parties would inevitably litigate claim construction issues before the jury." The motion
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`concluded with the following request:
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`If the Court's use of the word "cylinder" in its claim construction was
`intended to refer to shapes that did not have the properties of a cylinder, as
`reflected by its ordinary meaning, then Core Valve respectfully requests
`clarification of the Court's view of the meaning of that term pursuant to
`02 Micro, as a matter of law. If, on the other hand, the Court intends the
`parties to litigate before the jury whether the accused device has a shape
`"of or relating to a cylinder" under the ordinary meaning of the word
`"cylinder" as set forth in CoreValve's letter brief (D.L 129), then
`Core Valve respectfully requests that the Court delete the last sentence
`from its [aforementioned order denying CoreValve's letter request to file a
`summary judgment motion].
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`13
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 13 of 33
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`(Id. at 3.)
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`The court denied this motion in an order dated January 7, 2010:
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`Arguments concerning claim construction should have been presented at
`the Markman hearing or in the briefs filed with the court in connection
`with the Markman hearing. The defendant did not file a motion for re(cid:173)
`argument within the ten-day period after the Markman order was issued,
`as is required under Local Rule 7.1.5, and the court will not permit the
`parties to argue or re-argue matters of claim construction at this stage.
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`(D.1. 191.) Upon further consideration, however, the court recognized that without further
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`intervention, CoreValve's prediction that the parties might litigate claim construction issues
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`before the jury might prove to be a self-fulfilling prophesy. Consequently, the court announced
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`at the pretrial conference that it would make a minor amendment to footnote 13 in order to
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`specify how it was rejecting CoreValve's argument The court then issued an order formalizing
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`this amendment, which changed the last sentence of footnote 13 of the court's Markman order so
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`that it read "the court rejects the defendant's proposed construction that requires 'a diameter that
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`is constant along the longitudinal axis'" instead of simply "[t]he court rejects the defendant's
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`proposed construction." (Compare D.l. 271 at 4, note 13, with D.I. 109 at 4, note 13.)
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`The court fervently hoped that this amendment would deter Core Valve from raising this
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`claim construction issue again at trial. Unfortunately, it did not take long for CoreValve to dash
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`those hopes. At trial, Core Valve witness Dr. Martin Rothman testified as follows when asked
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`whether CoreValve's device had a shape "of or related to a cylinder" as required by the court's
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`construction:
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`Well, to my mind, again, the "related to," we're not taught related by how
`much. And I take the cylinder to have parallel sides or virtually parallel
`sides and that is my definition, general definition of a cylinder.
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`(Tr. 1636:23-1637:3.) Shortly thereafter, CoreValve's counsel asked the court at sidebar
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`14
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`Edwards Lifesciences Corporation, et al. Exhibit 1039, p. 14 of 33
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`whether they could make a proffer of "evidence concerning the cylindrical rotation that would be
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`pursuant to [CoreValve's] proposed claim construction." (Tr. 1649:11-13.) The court denied the
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`request and warned Core Valve to "stop pushing the issue."
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`(Tr. 1649: 14-18.) On cross
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`examination, Dr. Rothman again testified, in response to a question as to the meaning of
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`"cylinder" in the context of the claims, that he took "cylinder" to mean an object whose
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`"diameter ... remain[s] constant" between the sides. (Tr. 1693:12-16.) Dr. Rothman insisted
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`that he applied the court's claim construction, but his testimony clearly conflicted with the
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`court's clear statement in