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IN THE UNITED STATES DISTRICT COURT 
FOR THE DISTRICT OF DELAWARE 


ARTHROCARE CORPORATION, 
Plaintiff, 


v. 


SMITH & NEPHEW, INC. 

Defendant. 


SMITH & NEPHEW, INC., 

Counterclaim Plaintiff, 


C.A.No.Ol-504-SLR 


v. 


ARTHROCARE CORPORATION, AND 
ETHICON, INC., 


Counterclaim Defendants. 


SMITH & NEPHEW'S REPLY BRIEF IN SUPPORT OF ITS RULE 50(b) MOTION FOR 

JUDGMENT AS A MATTER OF LAW 


Dated: August 14, 2003 FISH & RICHARDSON P.C. 

William J. Marsden, Jrl (#2247) 
Keith A. Walter, Jr. (#4157) 
Eugene B. Joswick (#4271) 
919 N. Market Street, Suite 1 1 00 
P.O. Box 1 1 14 

Wilmington, DE 19899-1114 
Telephone: (302)652-5070 

MarkJ.Hebert 
Thomas M. Johnston 
225 Franklin Street 
Boston, MA 02110-2804 
Telephone: (617) 542-5070 

Kurtis D. MacFerrin 
Karen L Boyd 

500 Arguello Street, Suite 500 
Redwood City, CA 94063 
Telephone: (650) 839-5070 

Attorneys for Defendant 
SMITH & NEPHEW, INC. 


TABLE OF CONTENTS 

Page 


L INTRODUCTION 1 

II. ARGUMENT 1 

A, The Accused Products Do Not Infringe the Asserted Claims 1 

1 . The Accused Products Do Not Infringe the '882 

Patent , ; 1 

2. The Accused Products Do Not Infringe the '536 

Patent A 3 

3. The Accused Products Do Not Infringe the '592 

Patent 5 

4. No Contributory Infringement or Inducement 7 

5. Infringement Issues ArthroCare Failed to Prove at 

Trial 8 

B. The Patents-In-Suit Are Invalid 9 

1 . Smith & Nephew's Rights Under Rule 50 Were 

Preserved 9 

2. The PTO Granted Smith & Nephew's Reexamination 

Requests 10 

3. The Asserted Claims of the '536 Patent Are Invalid 1 1 

a. Anticipation by the Pao '499 Patent 11 

b. Anticipation by the Doss '007 Patent 12 

c. Anticipation by Roos ' 198 and the Elsasser 

Article 14 

4. The Asserted Claims of the '882 Patent are Invalid 15 

a. Anticipation by the Manwaring ' 138 Patent 1 5 

b. Anticipation by the Slager Article 17 

c. Lack of Enablement 18 

5. The Asserted Claims of the '592 Patent Are Invalid 19 

a. Anticipation by the Doss '007 Patent 19 

i 


TABLE OF CONTENTS (cont'd) 

Page 

b. Anticipation by the Slager Article 20 

IH. CONCLUSION 21 


ii 


TABLE OF AUTHORITIES 


Pagefe) 

CASES 


Acosta v. Honda Motor Co., 

717 F2d 828 (3d Cir. 1983) „ 10 

Duro-Last, Inc. v. Custom Seal, Inc., 

321 F.3d 1098 (Fed. Cir. 2003) 10 

Laborers' Pension Fund v. A&C Environmental, Inc., 

301 F.3d 768 (7th Cir. 2002) 9 

Mahurkar v. C.R. Bard, Inc., 

79 F.3d 1572 (Fed. Cir. 1996) „ 17 

Motorola, Inc. v. Interdigital Tech. Corp., 
930 F. Supp. 952 (D. Del. 1996) 

rev'd in part on other grounds 121 F.3d 1461 (Fed. Cir. 1997) 9, 10 

i 

Ryco, Inc. v. Ag-Bag Corp., 

857 R2d 1418 (Fed. Cir. 1988) « 8 

Schering Corp. v. Geneva Pharm., Inc., 

2003 WL 21767852 (Fed. Cir. Aug. 1, 2003) 13, 14 

State Industrial, Inc. v. A.O. Smith Corp., 

751 F.2d 1226 (Fed. Cir. 1985) 8 

Superior Fireplace Co. v. Majestic Prods. Co., 
92 F.Supp.2d 1001 (CD. Cal. 2000), 

aff*d in relevant part, 270 F.3d 1358 (Fed. Cir. 2001) 1, 2, 3, 4 

Tandon Corp. v. U.S. International Trade Commission, 

831 F.2d 1017 (Fed. Cir. 1987) 4, 6, 7 

Ultradent Products, Inc. v. Life-Like Cosmetics, Inc., 

127 F.3d 1065 (Fed. Cir. 1997) «. 12 

University of Rochester v. G.D. Searle & Co., 

249 F.Supp.2d 216 (W.D.N.Y. 2003) ~. 19 

Verdegaal Brothers, Inc. v. Union Oil Co. of Cal, 

814 F.2d 628 (Fed. Cir. 1987) 13 

Wilburn v. Maritrans GPInc, 

139 F.3d 350 (3d Cir. 1998) 2 

Wilson Sporting Goods v. David Geoffrey &Assocs., 

904 F.2d 677 (Fed.Cir.1990), overruled in part on other grounds 

by Cardinal Chem. Co. v. Morton Int'l, 508 US. 83 (1993) 9, 10 


iii 


TABLE OF AUTHORITIES (cont'd^ 

Pagefs) 

STATUTES AND OTHER AUTHORITIES 

37 CFiL 1.555 16, 17,20,21 

Fed R. Civ. P. 50(b)(2)(B) .. 9 

Fed R. Evid. 701 » 2 


iv 


I. INTRODUCTION 

ArthroCare's Answering Brief fails to rebut Smith & Nephew's showing that JMOL 
should be entered in its favor on die following issues: 

• the *882 certificate of correction is invalid; 

• the accused products do not infringe any of the patents-in-suit; 

• Smith & Nephew does not contribute to or induce infringement of the patents-in- 
suit; 

• Smith & Nephew does not infringe under the doctrine of equivalents, non-suction 
Saphyre probes do not infringe claim 54 of the '882 patent, and Smith & Nephew 
does not directly infringe the '882 or '592 patents; 

• the claims of the patents-in-suit are anticipated by various references; and 

• the claims of the '882 patent are not enabled. 

The evidence at trial, including the testimony of ArthroCare's own witnesses, supports 
Smith & Nephew's position on these issues. Further, since filing its Opening Brief, Smith & 
Nephew has learned that the PTO has granted its requests for reexamination of the patents-in-suit 
These reexamination requests were based on virtually the same invalidity evidence that Smith & 
Nephew presented at trial, thus confirming that the jury was misled and that its verdict is 
incorrect. Thus, the Court should grant JMOL in favor of Smith & Nephew on these issues. 
II- ARGUMENT 

A. The Accused Products Do Not Infringe the Asserted Claims 

1. The Accused Products Do Not Infringe the '882 Patent 

ArthroCare has failed to overcome Smith & Nephew's showing that the certificate of 
correction which broadened claim 1 of the *882 patent was invalid, and thus, that there was no 
infringement of the '882 patent 1 Smith & Nephew's Opening JMOL brief showed that the 

1 As set forth in our New Trial Motion, Smith & Nephew continues to maintain that the 
validity of the certificate of correction is an issue of law for the Court, and not for the jury (D.I. 
456 at 27-30). This was also Smith & Nephew's position before trial (DJ. 246 at 35-37). 
ArthroCare itself also argued that it was an issue of law for the Court (Di 335 at 157) However, 
since the Court submitted the issue to the jury, Smith & Nephew has also shown that the 
certificate is invalid considering the evidence adduced at trial. 


certificate of correction was invalid by the clear and convincing evidence introduced at trial, 
including the testimony of Dr. Goldberg, Mr. Raffle, and the '882 prosecution history (D.I. 459 at 
14-19), under Superior Fireplace Co. v. Majestic Prods. Co., 270 FJd 1358 (Fed. Cir. 2001). 
Under Superior Fireplace, a broadening certificate of correction is only valid <4 where it is clearly 
evident from the specification, drawings, and prosecution history how the error should 
appropriately be corrected" Id. at 1372. 2 No reasonable juror could determine that the 
corrections made in the *882 certificate were "clearly evident" based on that record, particularly 
since the specification (eg., JTX-2 at cols. 3-5, 7-9, 1 1-12, 15, 20-23), drawings (e.g., Figs. 15, 
17, 19-22), and prosecution history (e.g., amendment to claim 52 (DTX-306 at 204-05) and 
examiner's statement (DTX-306 at 222)) all supported the use of the term "active electrode" in 
claim 1 of the uncorrected '882 patent. 3 

ArthroCare complains that Smith & Nephew failed to introduce "expert testimony" about 
the certificate. (D.I. 467 at 18). But ArthroCare has not cited any case that suggests that this is a 
matter for expert testimony, and we are aware of none. Certainly there was no such expert 
testimony in Superior Fireplace — in fact, the district court expressly disavowed the use of any 
extrinsic evidence beyond the patent file itself. Superior Fireplace Co. v. Majestic Prods. Co., 92 
F.Supp.2d 1001, 1008-9 (CD. Cal. 2000), off din relevant part, 270 F.3d 1358 (Fed. Cir. 2001). 

ArthroCare also argues that the trial testimony of Mr. Raffle, the patent's prosecutor, 
about his intent was sufficient to uphold the validity of the certificate. (D.L 467 at 19). But 
Superior Fireplace clearly says that such intent is not relevant Id. at 1 375. Thus, no reasonable 
juror could have properly relied on Mr. Raffle's testimony about his intent. ArthroCare also 
points out that Mr. Raffle testified that there was an incorrect antecedent basis in the uncorrected 
claim. (D.I. 467 at 19). But the Federal Circuit explained in Superior Fireplace that an 

2 Emphasis added here and throughout, unless otherwise noted- 

3 Smith & Nephew also introduced the pre-litigation report of Mr. Heim (PX-75), who was 
one of skill in the art (D.L 414 at 933-34), which shows that the use of the tern "active electrode" 
in claim 1 of the 4 882 patent was not a "clearly evident" error. (See PX-75 at 24-25). See 
Wilburn v. Maritrans GP Inc., 139 F.3d 350, 356 (3d Cir. i998) (holding that a lay witness can 
offer opinion testimony if the witness possesses sufficient and relevant knowledge or experience). 

2 


antecedent error merely indicates that one of the limitations includes a mistake, but "does not 
indicate which is mistaken" Id, at 1362, 1373. And other than Mr. Raffle's irrelevant testimony, 
ArthroCare offered no other evidence to rebut die evidence offered by Smith & Nephew. 4 

Thus, JMOL should be entered that the '882 certificate of correction which broadened 
claim 1 is invalid, and that there is no infringement of the '882 patent 

2. The Accused Products Do Not Infringe the '536 Patent 

ArthroCare has also failed to rebut Smith & Nephew's showing that it should be granted 
JMOL that the accused products do not infringe the asserted claims of the '536 patent As shown 
in Smith & Nephew's Opening Brief, ArthroCare introduced no evidence that the accused probes 
are part of an "electrosurgical system" as construed by the Court "an assemblage or combination 
of things or parts forming a unitary whole" which includes "an electrically conducting fluid 
supply." (D.L 459 at 6-1 0). 5 ArthroCare has not shown otherwise, and, in fact, the evidence 
ArthroCare cites in its opposition actually proves that Smith & Nephew does not infringe. 

As described in the *536 patent, the integral fluid supply is included as part of the 
"unitary whole" system so that the invention can be used in open surgical procedures. The patent 
explicitly describes the invention as one for performing electrosurgery "without requiring the 
tissue to be submerged in an electrically conducting irrigant, such as isotonic saline." (JTX-1 at 
col.3, lines 1 2-1 8). Thus, the patent says the invention is "particularly effective in dry 
environments (i.e., the tissue is not submerged in fluid). 99 (Id. at col. 3, lines 37-41). Yet, despite 
the patent's clear disavowal of submerging the device in fluid, the only evidence ArthroCare 

4 None of ArthroCare' s other arguments has any merit E.g., ArthroCare argues that Mr. 
Raffle was not motivated to sue Ethicon since he did not amend claim 26. (D.L 467 at 20). But 
in our Reply Brief on die inequitable conduct issue, we showed that ArthroCare did not need to 
amend claim 26 to sue Ethicon. (D.L 464 at 12-13). ArthroCare also tries to distinguish a portion 
of Superior Fireplace by arguing that there was no reason to respond to the examiner's statement 
of reasons for allowance since the claims had been allowed. (D.L 467 at 20). But that argument 
makes no sense, since the claims in Superior Fireplace were also allowed at the same time that 
the examiner issued his amendment which contained the alleged error. 270 F.3d at 1363. 

5 Contrary, to ArthroCare's argument (Dl 467 at 7-8), Smith & Nephew did not argue that 
there had to be a fluid path within the probe, although that certainly would be one way to have a 
''unitary whole" system that included a fluid supply. 

3 


points to is evidence that the Smith & Nephew devices work when submerged in fluid, e.g. t "the 
tissue was shown completely submerged under saline." (D.I. 467 at 1 1). Indeed, ArthroCare 
concedes that the accused probes are contraindicated for any procedure other than arthroscopy, in 
which the device will necessarily be submerged in fluid, (D.I. 467 at 1 1, 21). 

Further, when the accused devices are used, the fluid is supplied to the joint by a wholly 
separate means, such as an IV bag or a separate system like the IntellLJet system. Such separate 
fluid supply is not integral with or otherwise part of a "unitary whole" with the probe, but rather 
is a standard fluid supply used in all arthroscopic surgeries. Thus, ArthroCare's evidence that the 
accused devices will only work when submerged in conductive fluid — which is supplied by a 
completely separate means such as an IV bag — falls far short of proving that they are part of a 
"unitary whole" electrosurgical system that includes a conductive fluid supply. 6 

ArthroCare also argues that claim differentiation between claims 1 and 45 shows that 

claim 45 does not require that the fluid travel through a fluid path within the probe. (D.L 467 at 8 

n.l). However, "[w]hether or not claims differ from each other, one can not interpret a claim to 

be broader than what is contained in the specification and claims as filed." Tandon Corp. v. U.S. 

Int'l Trade Comm 7i, 831 F.2d 1017, 1024 (Fed. Cir. 1987). As the Court in Tandon held: 

[PJractice has long recognized that "claims may be multiplied ... to define the 
. metes and bounds of the invention in a variety of different ways." Thus two 
claims which read differently can cover the same subject matter. 

Id. at 1023 (citing Bourns, Inc. v. United States, 537 F.2d 486, 492 (Ct CI. 1976)) (internal 

citation omitted). 7 Thus, ArthroCare did not rebut Smith & Nephew's prima facie case that the 

accused products are not part of an "electrosurgical system" which includes a "fluid supply" as 

construed by this Court Therefore, the Court should grant JMOL of no infringement. 


6 ArthroCare's argument that Dr. Taylor described the in vitro experiment in the Slager 
Article as an electrosurgical system is inapposite. First, Dr. Taylor asserted the Slager Article 
only against the '882 and '592 patents, neither of which claim an "electrosurgical system" like the 
'536 patent. Further, while Slager might describe a type of system, Dn Taylor never said that it 
was an "electrosurgical system" as that term was construed by the Court. 

7 In any event, claims 1 and 45 clearly have a different scope. E.g., claim 45 includes a 
power supply; whereas, claim 1 does not. 


4 


3. The Accused Products Do Not Infringe the '592 Patent 
ArthroCare has also failed to rebut Smith & Nephew's showing that it should be granted 
JMOL that the accused products do not infringe the asserted claims of the 9 592 patent As shown 
in Smith & Nephew's Opening Brief, ArthroCare's evidence was based on the claim construction 
that ArthroCare proposed in its summary judgment briefs— which the Court rejected. 8 (D.L 459 
at 10-13). But ArthroCare introduced no evidence of infringement under the Court's claim 
construction: "the return electrode is not to contact the body at all during the performance of 
the claimed method" (D.L 353 at 2) (emphasis in original). 

The evidence at trial showed that the return electrodes of the accused products touch the 
body structure on a nearly continuous basis during use. ArthroCare does not dispute this. 
Instead, it defends the jury's verdict by arguing that i4 there are times" when the return electrode 
does not contact tissue. (D.1. 467 at 12-14). However, ArthroCare improperly focuses on only a 
portion of one claim step, while ignoring the others. In doing so, ArthroCare has failed to show 
that the return electrode is not in contact with the body "at all during the performance of the 
claimed method** as the Court's construction requires. Instead, ArthroCare twists the Court's 
ruling that the claimed method does not contain any time limitations and argues that if during the 
applying energy step of the method the return electrode does not touch for a split second, there is 
infringement. ArthroCare's argument makes no sense — it takes the words "at air out of the 
Court's claim construction — and is wrong. 

First, as pointed out in Smith & Nephew's Opening Brief (D.L 459 at 1 1-12), 
ArthroCare's argument completely ignores the first step of the claimed method: "positioning an 
electrode terminal into at least close proximity with the target site in the presence of an 
electrically conductive fluid." (JTX-3 at claim 1; see also claim 23). As was sera in the various 
sales-training videos shown during trial, during the portions of the procedure that the energy was 
not being applied, the first step of the claimed method was being practiced — the probe was being 

8 The Court rejected ArthroCare's claim construction in its Memorandum Opinion of April 9, 
2003 (D.L 353 at 6-7), and ArthroCare's argument that it did not propose a claim construction for 
the Court to reject (D J. 467 at 14, n.5) is incorrect. 

5 


positioned — and the return electrode often touched the tissue during that positioning step. (DTX- 
315,316). The positioning step is also part of the claimed method, and ArthroCare cannot ignore 
it. 

Second, ArthroCare cannot take a split second out of the claimed method and ignore the 
rest of the time the method is being performed. While the Court did rule that there was no time 
limitation to the method, it also instructed the jury that "the claimed method is performed when 
each of the three steps of the claim has been completed*' (D.1. 418 at 1718). Thus, as pointed 
out in our Opening Brief (Di. 459 at 12-13), the method is not "completed" until the energy is 
turned off. At that point, the method starts over again by the surgeon "positioning [the] electrode 
terminal into at least close proximity with the target site." So, contrary to ArthroCare 's argument 
(D.I. 467 at 16), if the return touches the tissue while the energy is on, there can be no 
infringement even if there had been no contact for the first 3 seconds. This is not a time 
limitation as ArthroCare asserts, but rather follows the Court's construction that "the claimed 
method is performed when each of the three steps of the claim has been completed" 

ArthroCare's argument that the design of the probes somehow proves that the return does 
not touch tissue (D.I. 467 at 17) is also wrong. First, this argument is inconsistent with its 
argument that Smith & Nephew warns surgeons to avoid return electrode contact. (Id. at 13). If 
the probes were designed so the return would not contact tissue, why would Smith & Nephew 
need to warn surgeons to avoid contact? 9 Further, the evidence demonstrates that the probes were 
not designed to avoid return electrode contact For example, Kate Knudsen testified that the 
Saphyre was designed to have the return electrode as close as possible to the active electrode so 
that the return would be in the surgeon's view to monitor the return electrode contact with tissue. 
(D.I. 414 at 963-64). This is confirmed by the Instructions for Use ("ITU") for the Saphyre, 
which only warn to avoid contact with "non-targeted tissue" (PX-381), since contact with target 

9 In any event, ArthroCare has no persuasive evidence that Smith & Nephew actually warns 
doctors in this way. All ArthroCare's "evidence" shows is how to hold the Saphyre to ensure 
optimal bubble evacuation (PX 324 at ORA 65090), and to make sure enough fluid is present 
around the ElectroBlade and Control RF to ensure that the return does not cause a tissue effect 
when it touches (D.1. 415 at 1023-25). 

6 


tissue was expected. Similarly, Karen Drucker testified that the ElectroBlade was designed with 
a large return since they "knew that the return would, in fact, contact tissue." (D.I. 415 at 1024). 

Dr. Goldberg's testimony also corroborates the fact that the probes woe not designed to 
avoid contact with tissue. For example, Dr. Goldberg testified "very clearly there is occasional 
contact frequently . . (D.I. 41 1 at 423). Dr. Goldberg then goes on to contradict himself with 
the claim that the "probe is designed to enable [there] not being contact" (Id.). Clearly, if there 
is "contact frequendy," the probes were not designed to avoid contact. Also, Dr. Goldberg tried 
to make much of the fact that the return electrodes of the Saphyre and Control RF are on a 
different plane, below the active electrode. (D.L 41 1 at 397 and 424). However, if this is 
evidence of no contact, then the ElectroBlade return must contact tissue because the return is on a 
plane spaced above the active electrode. (PX-l 13-A; PX-335). Finally, if the probes were 
r designed to avoid contact, ArthroCare would not have to rely on still images from the sales 
training videos (D.I. 467 at 16, n.6), but rather could have easily shown no contact while the 
videos were playing. 

Thus, ArthroCare did not rebut Smith & Nephew's prima facie case that the return 
electrode of the accused products contacts tissue during performance of the claimed method as 
construed by the Court, and the Court should grant JMOL of no infringement. 

4. No Contributory Infringement or Inducement 

ArthroCare has also failed to prove that Smith & Nephew contributorily infringes or 
induces infringement ArthroCare focuses on its alleged copying theory and its contention that 
the accused products were designed to infringe. (D.L 467 at 21, 25). Both arguments must fail. 

First, as discussed in our New Trial Brief (DX 456 at 17-24), ArthroCare's focus on its 
alleged copying case was prejudicial to Smith & Nephew. Since the trial is bifurcated, Smith & 
Nephew could not rebut ArthroCare's "evidence* 1 to show no copying occurred. Further, Smith 
& Nephew's awareness of ArthroCare' s patents and its review of AithroCare's devices alone do 
not prove that the devices were copied or designed to infringe. See, e.g., State Indus., Inc. v. AO. 
Smith Corp., 751 F.2d 1226, 1235-36 (Fed. Cir. 1985) ("Conduct such as [defendant's!, involving 

7 


keeping track of a competitor's products and designing new and possibly better or cheaper 
functional equivalents is the stuffof which competition is made . . ."); see also Ryco, Inc. v. Ag- 
Bag Corp,, 857 F.2d 1418, 1435 (Fed Cir. 1988) (TT]he incentive to design around a patent is a 
positive result of the patent system."). Thus, none of ArthroCare's evidence proves that Smith & 
Nephew intended to infringe, and there can be no inducement 

Also, as discussed above, the accused products cannot be designed to infringe because 
they are contraindicated for any use outside arthroscopy- The patents-in-suit are specifically 
directed to devices that can be used in a dry environment; i.e., outside arthroscopy. (See, e.g, 
JTX-1 at col. 3, lines 26-30). Since the products cannot be used outside arthroscopy, they cannot 
be designed to infringe. ArthroCare's argument that since electrically conducting fluid is present 
in arthroscopy it must infringe is clearly misleading. Similarly, as discussed above, the return 
electrodes were not designed to not contact tissue (D.L 414 at 963-64, D.L 415 at 1024; PX-1 13- 
A; PX-335), but rather to allow tissue contact with minimal effect Since the return electrodes 
were designed to allow contact, they could not have been designed to infringe. 

Moreover, since the accused products work when the return electrodes touch tissue, they 
have substantial non-infringing uses. Indeed, taking Mr. Bobrow's example from his closing 
argument, where for three seconds the return electrode is not in contact and then for one second it 
is (D.L 417 at 1580), would mean that the device was not infringing — even under ArthroCare's 
rejected claim construction (discussed above) — 25% of the time. Such a non-infringing use is 
clearly substantial, and not "occasional and aberrant" as ArthroCare suggests. (D J. 467 at 22). . 

Thus, ArthroCare did not rebut Smith & Nephew's prima facie showing of no 
contributory infringement and no inducement, and the Court should grant JMOL on this issue. 
5. Infringement Issues ArthroCare Failed to Prove at Trial 

ArthroCare's Opposition does not substantively challenge Smith & Nephew's right to 
JMOL under Fed. R. Civ. P. 50(b)(2)(B) that (1) there is no infringement under the doctrine of 
equivalents, (2) the non-suction Saphyre probes do not infringe claim 54 of the '882 patent and 
(3) Smith & Nephew does not directly infringe the '882 and '592 patents. ArthroCare's 

8 


procedural argument that these issues cannot be resolved by JMOL (D.I. 467 at 6) is refuted by 
the clear language of the rule itself. Rule 50(bX2)(B) specifically states that "the court may[,] if 
no verdict was returned[ J . . . direct entry of judgment as a matter of law." No verdict was 
returned on these issues because ArthroCare, although it raised the issues before trial, failed to 
present any evidence to support its accusations. ArthroCare should be precluded from raising 
these issues in the future, and the Court should enter JMOL for Smith & Nephew's on these 
issues. 

B. The Patents-In-Suit Are Invalid 

1. Smith & Nephew's Rights Under Rule 50 Were Preserved 

Contrary to ArthroCare' s arguments (D.1. 467 at 26), the Court clearly preserved Smith & 
Nephew's rights under Fed. R. Civ. P. 50(a). The Court can preserve the parties' rights and 
submit the matter to the jury without requiring a detailed Rule 50(a) motion and without affecting 
the parties' rights under Rule 50(b). Motorola, Inc. v. Interdigital Tech. Corp., 930 F. Supp. 952, 
961 (D. Del. 1996) rev'd in part on other grounds 121 F3d 1461 (Fed. Cir. 1997); see also 
Wilson Sporting Goods v. David Geoffrey & Assocs., 904 F.2d 677, 683 (Fed.Cir. 1990) overruled 
in part on other grounds by Cardinal Chem. Co. v. Morton Int% 508 U.S. 83 (1993); Laborers' 
Pension Fund v. A&C Environ., Inc., 301 F.3d 768, 776-77 (7th Cir. 2002). 

Here, when Smith & Nephew moved for JMOL during trial, the Court indicated that it 
was not interested in a detailed argument, instructing the parties that all of their rights were 
reserved Smith & Nephew first moved for JMOL at die close of ArthroCare's evidence. (D.L 
415 at 1161). Smith & Nephew then renewed its motion at the close of all the evidence, to which 
the Court replied "All such motions are reserved." (D.L 417 at 1549). Then, just prior to the jury 
charge, Smith & Nephew again renewed its motion. (D.L 418 at 1700). In response, the Court 
said, "All your rights are reserved and my decisions are reserved as well." (Id.). 

As can be seen from these exchanges, the Court cut-off any further discussion and 
explicitly reserved all of both parties' rights as to JMOL motions. This is identical to what 
happened in Motorola, in which the movant made a barebones motion under Rule 50(a): 

9 


The Court made clear that it did not require or desire additional argument at the 
time the motion was made, and it would be unfair to penalize ITC for acceding to 
the Court's wishes. The Court will rule on TTCs JMOL motion. 

930 F. Supp. at 961; see also Wilson Sporting Goods Co., 904 F.2d at 683. Thus, Smith & 

Nephew's rights under Rule 50 were properly preserved. 10 

Moreover, ArthroCare has failed to show any prejudice from any lack of a more detailed 
Rule 50(a) motion, or that the spirit of the rule has been offended." The purpose of Rule 50(a) is 
the "avoidance of surprises and tactical victories at the expense of substantive interests." Acosta 
v. Honda Motor Co., 717 F.2d 828, 832 (3d Cir. 1983) (quoting Wall v. United States, 592 F.2d 
1 54 (3d Cir. 1 979)). Rule 50(a) protects that spirit by requiring notice to afford the other party 
the opportunity to cure possible technical defects in its proof. Id at 83 1 

ArthroCare was fully aware of Smith & Nephew's invalidity defenses and made a 
deliberate decision to not put on any rebuttal case on invalidity. Instead, ArthroCare chose only 
to cross-examine Smith & Nephew's experts and called only one rebuttal witness to support its 
copying theory (D.L 417 at 1544-48) before resting (D.1. 417 at 1548). Further, ArthroCare has 
not shown any prejudice or that it would have proceeded any differently if Smith & Nephew had 
presented a more detailed JMOL motion. 

Thus, ArthroCare' s argument that Smith & Nephew's Rule 50 rights were not preserved 
has no merit. 

2. The PTO Granted Smith & Nephew's Reexamination Requests 
As discussed in Smith & Nephew's Reply Brief in Support of Its Inequitable Conduct 
Case, the PTO recently granted Smith & Nephew's requests to reexamine each of the patents-in- 
suit (D.L 464 at 1; see also Exs. A, B and C attached to the Declaration of Eugene Joswick in 
Support of this Brief, hereafter "Joswick Dec."). The PTO's granting of the requests supports 


None of the cases cited by ArthroCare address the issue of the Court's ability to reserve the 
issues and the parties' rights. 

11 Even Duro-Last, Inc. v. CustomSeal, Inc., 321 F.3d 1098, 1106 (Fed. Cir. 2003), a case 
cited by ArthroCare, recognized that w [a] liberal reading of the rule may be appropriate in some 
circumstances, such as when the failure is largely a technical one, and no prejudice results." 

10 


Smith & Nephew's contention that the jury was misled by ArthroCare during trial and that its 
verdict of validity was against the great weight of the evidence. For example, as the Order 
Granting the Request to reexamine the '592 patent points out: "Roos * 198 discloses an 
electrically conducting fluid in Claim 1. The teaching of an electrically conducting fluid by Roos 
* 198 was not considered in the prosecution of the application, which became the Eggers et al. 
patent" (Joswick Dec Ex. C at 3). This same "teaching" was presented to the jury during trial 
but was ignored despite the lack of any meaningful rebuttal by ArthroCare. The Court should 
consider these new reexamination determinations in evaluating Smith & Nephew's evidence 
supporting its request for JMOL on the anticipation issues. 12 

3. The Asserted Claims of the '536 Patent Are Invalid 
a. Anticipation by the Pao '499 Patent 

ArthroCare has failed to rebut Smith & Nephew's showing that it should be granted 
JMOL of anticipation in view of the Pao '499 patent 

ArthroCare now argues that its cross-examination of Dr. Taylor was directed to the 

"current flow path" limitation of claim 45, rather than the "minimize direct contact" limitation of 

claim 47. (D.L 467 at 29). ArthroCare's argument is curious since its questions to Dr. Taylor 

were clearly about "contact" But even if these questions somehow related to current flow path, 

the cross-examination did not overcome Smith & Nephew's prima facie case. The testimony 

from Dr. Taylor to which ArthroCare refers was clearly directed to only one embodiment 

described in the Pao '499 reference which discloses placing both electrodes in contact with tissue 

(D.I.416at 1408-10): 

Q. And so, if you're interpreting the outer electrodes as being a return, 
that means there the return electrode as described in this paragraph is in contact 
with the tissue; right? 

A. Yes. And this is one description how it could be used, but there 
are other descriptions where the outer electrode and return electrode does not 
contact tissue. 

* * * 

12 The fact that the PTO has granted these reexamination requests negates ArthroCare's 
argument that Smith & Nephew had a "more difficult" burden because the PTO had previously 
considered these references. (D J. 467 at 28-29, 31). 

11 


Q. So in this description of its use, what it's essentially saying is that 
you put the active and the return in contact with tissue and then the current then 
will flow between those two electrodes through the tissue; right? 

A. And this is one way, yes. The answer to your question is yes, and 
this is one way you use the device. It's not the only way. 

However, ArthroCare's reliance on a different embodiment does not rebut Smith & Nephew's 

prima facie case based on the anticipating embodiments disclosed in the Pao '499 patent See 

Ultradent Prods., Inc. v. Ufe-Like Cosmetics, Inc., 127 R3d 1065, 1068 (Fed. Gir. 1997). 

Indeed, the Pao '499 patent itself explicitly and inherently discloses that current will flow 

through the electrically conductive fluid. First, the current flow through the saline is explicitly 

disclosed. (DTX-21 at col. 7, lines 63-67). Second, the Pao '499 patent teaches that saline is 

introduced through the active electrode. {Id). Since saline is an electrically conductive fluid, the 

current will necessarily flow through the saline between the active and return electrodes. Dr. 

"Goldberg recognized this inherent property when discussing the accused products: 

And again, because it's electrically conductive fluids, when... the high-frequency 
generator, is activated, there will be current flow path between the active and the 
return. 

(D.I. 41 1 at 406; see also D.1. 41 1 at 398 and 412). The PTO also recognized this in granting 
Smith & Nephew's reexamination request based on the Pao '499 patent: "Requestor presents 
materially new arguments with respect to Pao *499 disclosure of introducing saline to the 
electrosurgical site and the saline's inherent property of conduction." (Joswick Dec. Ex. A at 4). 

Thus, ArthroCare did not rebut Smith & Nephew's prima facie case of anticipation based 
on the Pao '499 patent, and the Court should grant JMOL on this issue. 

b. Anticipation by the Doss '007 Patent 

ArthroCare has also failed to rebut Smith & Nephew's showing that it should be granted 
JMOL of anticipation in view of the Doss '007 patent. 

As discussed in our Opening Brief, the Doss '007 patent discloses a return electrode 
under the Court's claim construction: "an electrode having a larger area of contact than an active 
electrode, thus affording a lower current density." (D.L 459 at 26-28). ArthroCare's argument 


12 


that Doss '007 does not disclose a return electrode disregards the Court's claim construction of 
return electrode and focuses only on the definition of active electrode. (D.1. 467 at 30). 
ArthroCare argues that since the outer electrode has some tissue effect, it must be an active 
electrode. But as we showed in our Opening Brief (D.L 459 at 27-28), ArthroCare ignored the 
Court's admonishment during trial that it needed to show there was "no difference" between the 
active and return electrodes. (D.L 416 at 1389). Even now, in its Opposition Brief, ArthroCare 
does not argue that there is no difference between the two electrodes. ArthroCare's argument that 
the outer electrode has a tissue effect, and thus is an active electrode (D.L 467 at 30), is clearly 
contrary to the Court's claim construction and should be rejected. 13 

As also discussed in our Opening Brief, the Doss '007 patent discloses a connector at the 
proximal end of the device under the Court's claim construction: "a structure that electrically 
links the electrode terminal to the high frequency power supply." (D.L 459 at 29-30). Once 
again ArthroCare focuses on the fact that the location of the connector is not explicitly disclosed. 
(D.L 467 at 30). However, this is irrelevant because the location is inherently disclosed. 14 For 
example, Figure 7 shows both electrodes passing out the proximal (top) end of the device (DTX- 
1 7 at Fig. 7), which is the only place a connector could be located to "link the electrode terminal 
to the high frequency power supply." Further, and contrary to ArthroCare's argument, a single 
wire passing through the proximal end of the device from the active electrode to the power supply 
satisfies the Court's claim construction of "connector." There is no requirement in the Court's 
claim construction that the connector not be a conductor, or that it be a separate structure which is 
located only near the proximal end of the shaft, as ArthroCare argues. 15 

13 ArthroCare's argument about Dr. Taylor's deposition testimony is also unavailing. (D.L 
467 at 30-3 1 ). Even if the jury were to disregard that testimony, the jury cannot disregard the 
explicit disclosure in the reference (DTX-17 at Figs. 7 and 8) and this Court's claim construction. 
Verdegaat Bros., Inc. v. Union Oil Co. of Cat., 814 F.2d 628, 632 (Fed. Cir. 1987). 

14 See, e.g., Schering Corp. v. Geneva Pharm., Inc., 2003 WL 21767852 at *4 (Fed Cir. Aug. 
1, 2003) (a prior art reference need not supply an "express description of any part of the claimed 
subject matter" to anticipate). 

15 Had there been any such requirement, the accused products would not have a "connector." 


13 


Accordingly, ArthroCare did not rebut Smith & Nephew's prima facie case of 
anticipation based on the Doss '007 patent, and the Court should grant JMOL on this issue. 

c Anticipation by Roos '198 and the Elsasser Article 

ArthroCare has also failed to rebut Smith & Nephew's showing that it should be granted 
JMOL of anticipation in view of the Roos ' 198 patent and the Els&sser Article. 

ArthroCare first argues that the Roos '198 patent and the Elsasser Article do not disclose 
a connector near the proximal end of the shaft. (D.L 467 at 3 1-33). With respect to the ElsSsser 
Article, ArthroCare does not deny that it failed to ask Dr. Taylor a single question or present any 
evidence to contradict the disclosure in the Elsasser Article. Instead, ArthroCare says that Dr. 
Taylor identified no disclosure of a connector in the Article. (Id. at 31). ArthroCare is clearly 
wrong, since Dr. Taylor said "the one that is shown is right there." (D.I. 416 at 1298). 16 
Moreover, Figure 9 of Elsasser clearly shows connectors at the proximal end of the shaft, and 
does not show anything else that could be used to connect the electrodes to the generator. Thus, 
one of these connectors must necessarily be used to connect the active electrode to the generator. 

With respect to the Roos * 198 patent, ArthroCare mischaracterizes the passages that 
Smith & Nephew quotes in its Opening Brief. ArthroCare argues that the first passage quoted, 
regarding the leads 16, "discusses a cable leading to the return electrode." (DJ. 467 at 32). 
ArthroCare is wrong. Figures 7 and 8, which the quoted passage describes, clearly show that the 
leads 16 are connected to the active electrode (12) and not the return electrode (1 1). The cable 
leading to the return electrode is labeled 14, not 16. (DTX-1 1 at col. 7, lines 5-8). 

ArthroCare also argues that the Roos patent and Elsasser Article do not disclose 
electrically conducting fluid. (D.I. 467 at 33-34). In doing so, ArthroCare continues to make the 
same tortured arguments in an attempt to avoid the explicit disclosures in both references. For 
example, ArthroCare points to an irrelevant patent issued some ten years later, to the fact that 


ArthroCare argues that because Eh*. Taylor also used the word "connector" when describing 
a fluid connection in the Pao r 499 patent, the jury was entitled to disregard any testimony he gave 
on connectors. (D.L 467 at 32). This argument borders on the frivolous, since Dr. Taylor clearly 
described the connector in the Elsasser Article as an electrical connector. (DJ. 416 at 1298). 

14 


saline or ringers lactate is not explicitly recited, and the fact that Mr. Roos used the same generic 
term (hashing liquid**) for the fluid used with monopolar and bipolar procedures, 17 all in an 
attempt to side-step the explicit disclosures in claim 1 of the Roos patent and its file history. 

ArthroCare's argument that claim 1 of the Roos patent disclosed non-conductive fluid 
since non-conductive fluids will conduct some electrical current (D.L 467 at 34) is nonsense. 
Roos claim I says that the purpose of the liquid was "to provide electrical conductance," which 
clearly meets the Court's definition of "any fluid that facilitates the passage of electrical current" 
(D J. 353). Further, the Roos prosecution history calk the washing liquid an "electrical 
conductor" and says "the washing fluid would conduct electrical current just as the tissue fluid 
[eg., blood] and the tissue itself of the human body." (DTX-321, 8/12/77 Amendment at p. 7). 
The PTO also recognized that the Roos ' 198 patent discloses an electrically conductive fluid in 
granting Smith & Nephew's new reexamination request (Joswick Dec. Ex. A at 3). 

ArthroCare also argues that Smith & Nephew's quote from the ElsSsser Article does not 
support a disclosure of an electrically conductive fluid. (D J. 467 at 34, n.12); However, in so 
arguing, ArthroCare misleadingly cropped the following sentence out of the passage quoted by 
Smith & Nephew: "The current flows directly from the cutting loop to the neutral electrode 
through the adjacent tissue to be cut and the irrigation liquid: 9 (DTX-59B at 4 and D.L 459 at 
32). As this sentence shows, the Elsasser Article explicitly discloses electrically conductive fluid. 

Thus, ArthroCare did not rebut Smith & Nephew's prima Jade case of anticipation based 
on the Roos ' 198 patent and Elasser Article, and the Court should grant JMOL on this issue. 
4. The Asserted Claims of the '882 Patent are Invalid 
a. Anticipation by the Manwaring '138 Patent 

ArthroCare has also failed to rebut Smith & Nephew's showing that it should be granted 
JMOL of anticipation in view of the Manwaring '138 patent ArthroCare's argument is based on 


17 To this very day, electrically conductive saline is called "irrigation" liquid. (D.L 416 at 
1462). 

15 


the lack of explicit disclosure of UV photons in the Manwaring * 138 patent, and that the suction 
disclosed is not sufficient to evacuate fluid generated at the target site. (D.L 467 at 35-36). 18 

First, the undisputed testimony at trial shows that UV photons are inherently produced in 
the Manwaring M38 patent due to the operation of the laws of physics. 19 Dr. Taylor testified that 
a spark in aqueous solution will generate UV photons "because of the transition of the hydroxyl 
ion." (DX 416 at 1420). Dr. Manwaring also testified that sparking in water will produce UV 
photons. (DJ. 414 at 918-19). Moreover, this testimony is corroborated by the teaching of the 
*882 patent itself, which describes the production of UV photons from the "high electric field 
generated ... within the electrically conductive liquid." (See PX-2 at col. 4, lines 47-57). 
ArthroCare introduced no contrary evidence. 20 

Second, ArthroCare did not rebut the fact that the Manwaring '138 patent explicitly 
discloses evacuating fluid generated at the target site: "fluid . . . could be sucked into or drawn up 
tube 28 to a sufficient elevation." (DTX-46 at col 7, lines 26-31). In its Opposition, ArthroCare 
denies that it ever argued that all of the fluid had to be evacuated, after we pointed out that was 
not required by the claim. (D.1. 467 at 35-36). Now ArthroCare argues that some of the fluid 
would remain "in the vicinity" of the tissue, (Id.). But this is the same argument under a different 
name. ArthroCare is still trying to read extraneous limitations into the claim, which only requires 
"evacuating" (and is met by Manwaring) and does not say anything at all about "removing" 
"from beyond the vicinity" of the tissue. 


18 ArthroCare also argues that Manwaring discloses sparking followed by vaporization. (D.L 
467 at 35). However, as Dr. Goldberg admitted, fee claim requires vaporization and sparking, 
not vaporization then sparking. (D.L 415 at 1087). 

19 ArthroCare is under a continuing duty to apprise the PTO of any litigation activity (Joswick 
Dec. Ex. B at 3; 37 C.F.IL 1.555), and must disclose the Skromme report to the PTO showing that 
the commercial embodiment of the Manwaring patent did in fact produce UV photons. 

20 ArthroCare now challenges Dr. Taylor's explanation that the production of UV photons 
was a matter of elementary college chemistry, by saying that he "could produce no college 
chemistry textbook ... that supported his position." (D.I. 467 at 35, n.14). But ArthroCare never 
asked him for such a college textbook. 


16 


Moreover, the PTO recognized the validity of both of these arguments in granting Smith 
& Nephew's reexamination request based on the Manwaring ' 138 patent: 'These teachings were 
not previously considered nor addressed in prior examinations of the patent There is a 
substantial likelihood that a reasonable examiner would consider these teachings important in 
deciding whether or not the claims are patentable" (Joswick Dec. Ex. B at 3). 

Thus, ArthroCare did not rebut Smith & Nephew's prima facie case of anticipation based 
on the Manwaring * 1 38 patent, and the Court should grant JMOL on this issue. 

b. Anticipation by the Slager Article 

ArthroCare also failed to rebut Smith & Nephew's showing that it should be granted 
JMOL of anticipation in view of the Slager Article. ArthroCare has raised three arguments. 

First, ArthroCare protests that the Slager Article only discloses applying energy to a piece 
of aortic tissue in a petri dish. (D.L 467 at 36). As discussed m our Opening Brief, this is 
sufficient to meet the claim since Mr. Eggers* reduction to practice only involved experiments on 
chicken parts in a bowL (D.1. 459 at 38). ArthroCare cites Mahurkar v. C.1L Bard, Inc., 79 F.3d 
1572 (Fed. Cir. 1996), but that case actually supports Smith & Nephew's position. In Mahurkar, 
the patentee was attempting to pre-date a reference by showing a prior reduction to practice. Id, 
at 1578. The issue was whether the patentee's brittle prototype catheters met the "prevent[ing] 
the distal end of the catheter from traumatizing" the vessel limitation. Id. The court held they 
did, since the patentee "knew that his invention would become suitable for its intended purpose 
by simple substitution of a soft, biocompatible material." Id. The Slager Article meets all the 
limitations of the claim for the same reasons. Further, the ultimate "clinical** use of the device is 
explicitly disclosed (DTX-65 at 1386). ArthroCare's argument is also undercut by Dr. 
Goldberg's testimony on infringement (DX 415 at 1088): "to determine what a device can and 
cannot do often requires scientific analysis outside of the body." If analysis outside the body is 
sufficient for infringement evaluations, it is also sufficient for invalidity. 

Second, ArthroCare argues that the Slager Article does not explicitly disclose the 
production of UV photons. However, as discussed above with respect to the Manwaring '138 

17 


patent, any sparking in an aqueous solution (which is disclosed in Slager— see DTX 65 at 1384- 
85) will inherently produce UV photons by operation of the laws of physics. 

Finally, ArthroCare says that Dr. Taylor admitted that the Slager Article does not 
explicitly disclose the location of the suction lumen for evacuating the fluid generated at the 
target site. (D.1. 467 at 37). However, this does not overcome the inherent disclosure in the 
Slager Article. Since Slager discusses the use of a suction technique to remove the gas bubbles 
that are locally produced at the active electrode (DIX65 at 1383, 1386), the suction lumen 
would necessarily be adjacent the active electrode. 

Moreover, the PTO has recognized the validity of these arguments in granting Smith & 
Nephew's reexamination requests based on the Slager Article: 'These teachings were not 
previously considered nor addressed in prior examinations of the patent. There is a substantial 
likelihood that a reasonable examiner would consider these teachings important in deciding 
whether or not the claims are patentable." (Joswick Dec. Ex. B at 3). 

Thus, ArthroCare did not rebut Smith & Nephew's prima facie case of anticipation based 
on the Slager Article. The Court should grant JMOL in Smith & Nephew's favor on this issue. 
C. Lack of Enablement 

ArthroCare failed to rebut Smith & Nephew's showing that the asserted claims of the 
'882 patent are not enabled, and thus JMOL in Smith & Nephew's favor is proper. 

ArthroCare's main argument is that the '882 patent lists preferred ranges for many of the 
variables. (D.L 467 at 39). However, the '882 patent itself notes that the invention only works 
"under optimal conditions.'* (JTX-2 at col. 10, lines 65-67). During trial, ArthroCare asked Dr. 
Taylor about seven of the listed variables. (DJL416at 1436-1438). 21 Most of even the more 
preferred ranges for those variables are still quite broad; e.g., voltage ranges of 100 to 400 volts, 
frequency of 50 to 400 kHz, active electrode contact area of 0.005 mm 2 to 0.5 mm 2 , etc. These 
broad ranges for all the variables listed in the '882 patent result in hundreds, if not thousands, of 


21 Some of these limitation ranges were discussed in the table at page 43 of our Opening 
Brief, which shows how these preferred ranges would produce the Manwaring device. 

18 


possible combinations and permutations. Clearly, one would be required to perform extensive 
undue experimentation to determine exactly which combinations provided the required "optimal 
conditions" and which did not See, e.g., University of Rochester v. G.D. Searle & Co., 249 
F.Supp.2d 216 (W.D.N. Y. 2003) (patent invalid for lack of enablement since it provided 
"precious little guidance" for "narrowing the range" of candidate compounds, and thus would 
require undue experimentation). Thus, the '882 patent is not enabled. 

ArthroCare also argues that there was no basis for Dr. Taylor "to equate 'Coblation* with 
the claims of the '882 patent" (DX 467). This is simply incorrect For example, Jean 
Woloszko, ArthroCare^ VJ\ of Research and Development, testified that "Coblation" is 
ArthroCare's term for conducting current through a conductive fluid and creating a glow 
discharge plasma to ablate tissue. (D.I. 415 at 1048-49). This is exactly what the '882 patent 
teaches happens when the so-called "optimal conditions" are realized. (See JTX-2 at col. 10, line 
65 to col. 1 1, line 1). Thus, there was ample evidence for Dr. Taylor to equate the claims of the 
'882 patent with Coblation. 

Accordingly, ArthroCare did not rebut Smith & Nephew's prima facie case of invalidity 
based on non-enablement, and the Court should grant JMOL on this issue. 

5. The Asserted Claims of the '592 Patent Are Invalid 
a. Anticipation by the Doss '007 Patent 
ArthroCare has failed to rebut Smith & Nephew's showing that it should be granted 
JMOL of anticipation in view of die Doss '007 patent 

ArthroCare again argues that Doss does not disclose a return electrode. (D.1. 467 at 39). 
However, as discussed above, this argument fails because the outer electrode of the embodiment 
shown in Figures 7 and 8 is a return electrode under the Court's claim construction, which 
ArthroCare ignored. 

ArthroCare also argues that the generator disclosed in the Doss '007 patent is not 
necessarily a sine wave generator, and if it is not, the voltage might not be in the range required 
by claims 2 1 and 42. (DX 467 at 39). But ArthroCare's speculation is unavailing, since Doss 

19 


clearly says that "any radio-frequency current" having the specified characteristics "is suitable" 
(DTX-17 at col. 3, lines 30-38), and thus a sine wave is inherently included Further, it was 
undisputed at trial that only sine wave generators were commercially available. (DJ. 416 at 
1402)." 

Thus, ArthroCare did not rebut Smith & Nephew's prima facie case of anticipation based 
on the Doss *007 patent, and the Court should grant JMOL on this issue. x 
b. Anticipation by the Slager Article 

Finally, ArthroCare failed to rebut Smith & Nephew's showing that it should be granted 
JMOL of anticipation in view of the Slager Article. ArthroCare again argues that the Slager 
Article does not explicitly disclose applying energy to a body structure of a patient However, for 
the reasons shown above, this argument must fail. 23 

ArthroCare also argues that the Slager Article does not explicitly disclose the location of 
the return electrode. (D.I. 467 at 40). But ArthroCare is incorrect, since Slager clearly discloses 
that the aortic segments were only 7 cm. long, whereas the electrodes were spaced up to 10 cm. 
apart (DTX-65 at 1382-83). As such, a return electrode that was up to 10 cm. away from the - 
active electrode could not possibly have been in contact with tissue that was only 7 cm. long. 
Moreover, contrary to ArthroCare' s argument, Dr. Taylor never testified that he could not 
determine the location of the return electrode. (DJ. 416 at 1414-18). In fact, ArthroCare never 
even asked him about the return electrode in the in vitro tests, which Dr. Taylor relied upon. 
{Id.). 

Thus, ArthroCare has not overcome Smith & Nephew's prima facie case of anticipation 
based on the Slager Article, and the Court should grant JMOL on this issue as well. 

22 Had Doss used an unusual generator such as the custom-built square wave generator of the 
Slager Article as ArthroCare suggests, it would have had to have been disclosed to satisfy the best 
mode requirement 

23 In granting Smith & Nephew's reexamination request for the *592 patent, the Examiner 
misinterpreted the Slager Article as not anticipating. (Joswick Dec. Ex. C at 3). However, 
ArthroCare is under a continuing duty to apprise the FTO of material information disclosed 
during these proceedings (Id. at 4-5; 37 CFR 1.555), including Mr. Eggers* testimony that he 
reduced the claimed invention to practice in a bowl outside the human body. 

20 


UL CONCLUSION 

For all the foregoing reasons, as well as the reasons set forth in Smith & Nephew's 
Opening Brief; Smith & Nephew respectfully requests that the Court enter JMOL that the '882 
certificate of correction is invalid, that the accused products do not infringe the asserted claims, 
that the asserted claims of the '536 and '592 patent are anticipated by the prior art, and that the 
asserted claims of the '882 patent are not enabled and are anticipated by the prior art. 


Dated: August 14, 2003 FISH & RICHARDSON P.C. 


By: 



919 N. Market Street, Suite 1 100 
P.O.Box 1114 

Wilmington, DE 19899-1114 
Telephone: (302)652-5070 
Facsimile: (302)652-0607 


MarlcJ.Hebert 
Thomas M. Johnston 
225 Franklin Street 
Boston, MA 02110-2804 
Telephone: (617) 542-5070 
Facsimile: (617) 542-8906 

Kurtis D. MacFerrin 
Karen I. Boyd 

500 Arguello Street, Suite 500 
Redwood City, CA 94063 
Telephone: (650) 839-5070 
Facsimile: (650) 839-5071 

Attorneys for Defendant 
SMITH & NEPHEW, INC. 


21 


CERTIFICATE OF SERVICE 


I hereby certify that on this 14* day of August, 2003, a true and correct copy of SMITH 
& NEPHEW'S REPLY BRIEF IN SUPPORT OF ITS RULE 50(b) MOTION FOR JUDGMENT 
AS A MATTER OF LAW was caused to be served on the attorneys of record at the following 
addresses as indicated: 


BY HAND DELIVERY 
Jack B. Blumenfeld, Esq. 
Morris, Nichols, Arsht & Tunnell 
1201 North Market Street 
P.O. Box 1347 
Wilmington, DE 19899-1347 


Attorney for Plaintiff 
ArthroCare Corporation 


BY FEDERAL EXPRESS 
Matthew D. Powers, Esq. 
Jared Bobrow 
' Perry Clark, Esquire 
Weil, Gotshal & Manges LLP 
201 Redwood Shores Parkway 
Redwood Shores, CA 94065 


Attorneys for Plaintiffs 
ArthroCare 


BY HAND DELIVERY 

Steven J. Balick, Esq. 

Ashby & Geddes 

222 Delaware Avenue, 17th Floor 

P. O. Box 1150 

Wilmington, DE 19899 


Attorney for Plaintiff/Counterclaim 

Defendant 

Ethicon, Inc. 



William J. 


1 


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