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Applied Med. Res. Corp. v. United States Surgical Corp.

United States Court of Appeals for the Federal Circuit

January 24, 2006, Decided



 [***1667]   [*1357]  LOURIE, Circuit Judge.

United States Surgical Corporation ("U.S. Surgical") appeals from the decision of the United States District Court for the Central District of California granting  [*1358]  judgment of willful infringement of U.S. Patent 5,385,553 in favor of Applied Medical Resources Corporation ("Applied"), and awarding damages, enhanced damages, attorney fees, and prejudgment interest totaling $  [**2]  64.5 million. Applied Med. Res. Corp. v. U.S. Surgical Corp., Civ. No. 99-CV-625 (C.D. Cal. Jan. 27, 2005). Because the district court did not err in not applying collateral estoppel to the reasonable royalty rate, substantial evidence supports the jury's verdict of willful infringement, and the court did not abuse its discretion in admitting evidence regarding a prior litigation, we affirm.


The '553 patent is entitled "Trocar With Floating Septum Seal" and was issued to Applied as assignee. The invention relates to surgical devices called trocars, which are used as access ports into the abdomen during laparoscopic surgery. Laparoscopic surgery is performed by inflating the abdomen and inserting instruments through trocars. It is important for the trocar to maintain a seal with the instrument; otherwise, the insufflation gas used to inflate the abdomen would leak and potentially cause serious complications.

Early trocars did not accommodate instruments of different diameters. For example, inserting a relatively small instrument through a large seal would produce a gap between the instrument and the seal, allowing the insufflation gas to leak out from the abdomen. [**3]  As a result, surgeons were required to either use multiple trocars with differently sized seals or [***1668]  "flip top" adapters to accommodate differently sized instruments. The invention of the '553 patent eliminates the need for adapters, describing a trocar which maintains a seal around instruments of various sizes, using a "floating seal." Specifically, claim 3 recites a trocar whose seal includes excess material at its outer portions, which permits the seal orifice to move without allowing gas to leak. '553 patent, col. 11, ll. 57-62. Claim 4, which depends from claim 3, further requires that the excess material be configured in a bellows shape. Id., col. 11, ll. 63-64.

The parties to this appeal are no strangers to each other and to this court. Applied first sued U.S. Surgical in the United States District Court for the Eastern District of Virginia in 1996 ("Applied I"), alleging that U.S. Surgical's sale of its Versaport trocars ("Versaport I") infringed the '553 patent, as well as two other Applied patents. In 1997, a jury found that U.S. Surgical willfully infringed claims 4 and 18 of the '553 patent as well as two other Applied patents, and awarded damages in the form of [**4]  a 7% reasonable royalty. The court granted judgment for $ 20.5 million and entered a permanent injunction enjoining further infringing sales effective May 20, 1997. Applied Med. Res. Corp. v. U.S. Surgical Corp., 967 F. Supp. 861 (E.D. Va. 1997). We affirmed that judgment on June 30, 1998. Applied Med. Res. Corp. v. U.S. Surgical Corp., 147 F.3d 1374 (Fed. Cir. 1998).

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435 F.3d 1356 *; 2006 U.S. App. LEXIS 1631 **; 77 U.S.P.Q.2D (BNA) 1666 ***


Prior History:  [**1]  Appealed from: United States District Court for the Central District of California. Judge Cormac J. Carney.

Applied Med. Res. Corp. v. United States Surgical Corp., 2005 U.S. Dist. LEXIS 47912 (C.D. Cal., Jan. 26, 2005)

Disposition: AFFIRMED.


infringement, Surgical, damages, royalty, sales, district court, negotiation, willful, collateral estoppel, hypothetical, trocar, patent, seal, royalty rate, matter of law, parties, injunction, litigated, products, redesign, motion for judgment as a matter of law, evidentiary, purposes

Patent Law, Preclusion, Collateral Estoppel, Jurisdiction & Review, Standards of Review, General Overview, Civil Procedure, Preclusion of Judgments, Estoppel, Appeals, Damages, Patentholder Losses, Reasonable Royalties, Remedies, De Novo Review, Trials, Judgment as Matter of Law, Substantial Evidence, Sufficiency of Evidence, Abuse of Discretion, Evidence, Admissibility, Procedural Matters, Rulings on Evidence