Case 1:10-cv-00631-RGA-MPT Document 412 Filed 10/12/12 Page 1 of 3 PageID #: 11176

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

ST. JUDE MEDICAL CARDIOLOGY DIVISION, INC., ST. JUDE MEDICAL SYSTEMS AB, and ST. JUDE MEDICAL S.C., INC., Plaintiffs,
V.

Civil Action No. 10-631-RGA

VOLCANO CORPORATION, Defendant.

ORDER

Upon further consideration of the Court's previous Memorandum Opinion (D.I. 394), and subsequent discussion with counsel on October 11, 2012, the Court finds that: 1. The Plaintiffs can authenticate the disputed video. 2. The video is in English and it is reasonable to infer that there were a substantial number of U.S. resident cardiologists in the Paris, France audience. 3. The video demonstrated the Radi Analyzer with Thermo Option, that is, a Radi Analyzer with two display screens for diagnostic information. 4. The video was shown on May 25,2001. Within two weeks of the video being shown, the Radi Analyzer with Thermo Option was being discussed by or with U.S. based Volcano employees. It is a reasonable inference that the discussion was caused by the Paris demonstration. 5. There is no likely useful discovery that Volcano could have done had it had the video

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earlier. 6. The person of ordinary skill in the art for invalidity purposes is not a cardiologist but is a person with a certain level of computer expertise. There is no evidence that any such person was in the Paris audience. 7. The most significant open question is whether St. Jude's proffer of evidence, including the DVD, would anticipate Volcano's patent. The only theory offered is 102(a) ("the invention was known ... by others in [the United States]." There is not a lot of case law on this issue. The case relied upon by Plaintiffs is Amkor Tech., Inc. v. fTC, No. 2010-1550 (Fed. Cir. Aug. 22, 20 12). The case involves the interpretation of 102(g) and its relevance to the issue at hand is marginal at best. 8. "A presentation indicative of the state of knowledge and use in [the United States] therefore qualifies as prior art for anticipation purposes under [ 102(a)]." Ecolochem, Inc., v. Southern Cal. Edison Co., 227 F.3d 1361, 1369 (Fed. Cir. 2000). The video and the underlying demonstration do not indicate the state of knowledge or use in the United States. The Ecolochem quote comes from a factual context where the presentation was in the United States, so it may not completely address the issue at hand. 9. There is no evidence about "use." The only possible theory is "knowledge." The theory that American cardiologists have knowledge (meaning that the knowledge "satisfies the requirements of disclosure and enablement," Active Video Networks v. Verizon Communications, 807 F.Supp.2d 563, 567 (E.D.Va. 2011), based on watching a device the patented features of which are not within their area of expertise, cannot be proved by clear and convincing evidence based on the proffered evidence. 10. Thus, the video and any testimony about the Paris demonstration to show that the

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Radi Analyzer with the Thermo Option anticipated the relevant patent is excluded as not presenting sufficient evidence to raise a triable jury question on the proposed legal theory.

IT IS SO ORDERED this _.._-=--rT_day of October 2012.

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