In a patent infringement case involving implantable cardioverter defibrillators (ICDs), district court's judgment is reversed in part and affirmed in part where: 1) summary judgment of invalidity for defendant is reversed as invalidity was not at issue on remand because the mandate rule, and reinstatement of the jury's validity verdict precluded defendant's anticipation defense on remand; 2) jury's verdict that the patent was not unenforceable for uninequitable conduct is reinstated, and a grant of a new trial on that issue is reversed; 3) district court's ruling on damages is remanded for redetermination, limited to instances in which the patented method has actually been performed; and 4) the en banc circuit court reverses a determination that section 271(f) applies to method claims and hence permits damages in this case on devices exported where the claimed method is carried out in countries other than the United States.
Appeal from the United States District Court for the Southern District of Indiana.
Decided August 19, 2009
Before Newman, Mayer, and Louries, Circuit Judges.
Opinion by Lourie, CIrcuit Judge.
For Plaintiff: Arthur I. Neustadt, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Alexandria Virgina.
For Defendant: Mark A. Perry, Gibson, Dunn & Crutcher LLP., of Washington, DC.