1347 CARDIAC PACEMAKERS, INC. and GUIDANT SALES CORPORATION v. ST. JUDE MEDICAL, INC. and PACESETTER, INC.

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1296, -1347
CARDIAC PACEMAKERS, INC.
and GUIDANT SALES CORPORATION,
Plaintiffs-Appellants,
and
MIROWSKI FAMILY VENTURES, LLC and ANNA MIROWSKI,
Plaintiffs-Appellants,
v.
ST. JUDE MEDICAL, INC.
and PACESETTER, INC.,
Defendants-Cross Appellants.
Arthur I. Neustadt, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of
Alexandria, Virginia, argued for all plaintiffs-appellants. With him on the brief for Mirowski
Family Ventures, LLC, et al. was Barry J. Herman. On the brief for Cardiac Pacemakers,
Inc., et al. were J. Michael Jakes, Kara F. Stoll, Michael V. O’Shaughnessy, and Molly R.
Silfen, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC.
Mark A. Perry, Gibson, Dunn & Crutcher LLP, of Washington, DC, argued for
defendants-cross appellants. With him on the brief was Denis R. Salmon, of Palo Alto,
California. Of counsel on the brief was Jeffrey M. Olson, Sidley Austin LLP, of Los
Angeles, California.
Appealed from: United States District Court for the Southern District of Indiana
Judge David F. Hamilton

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NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1296, -1347
CARDIAC PACEMAKERS, INC.
and GUIDANT SALES CORPORATION,
Plaintiffs-Appellants,
and
MIROWSKI FAMILY VENTURES, LLC and ANNA MIROWSKI,
Plaintiffs-Appellants,
v.
ST. JUDE MEDICAL, INC.
and PACESETTER, INC.,
Defendants-Cross Appellants.
Appeals from the United States District Court for the Southern District of
Indiana in 96-CV-1718, Judge David F. Hamilton.
____________________
DECIDED: December 18, 2008
____________________
Before NEWMAN, MAYER, and LOURIE, Circuit Judges.
LOURIE, Circuit Judge.
Cardiac Pacemakers, Inc., Guidant Sales Corporation, Mirowski Family
Ventures, LLC, and Anna Mirowski (collectively “Cardiac” or “appellants”) appeal from
the decision of the United States District Court for the Southern District of Indiana

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granting summary judgment of invalidity of claim 4 of U.S. Patent 4,407,288 (“the ‘288
patent”). See Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 483 F. Supp. 2d 734
(S.D. Ind. 2007) (“Invalidity Decision”). St. Jude Medical, Inc. and Pacesetter, Inc.
(collectively, “St. Jude”) cross-appeal the district court’s decision permitting damages
under 35 U.S.C. § 271(f). See Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 418
F. Supp. 2d 1021, 1027-30 (S.D. Ind. 2006) (“Damages Decision”). Because the district
court erred in concluding that it could find the ‘288 patent anticipated, we reverse on
invalidity. As infringement has already been decided by the court, we remand the case
for a determination of the damages award. Such a determination should be made in
accordance with the district court’s prior rulings, which we affirm, limiting damages to
those devices that can be shown to have executed the steps comprising claim 4 of the
‘288 patent.
BACKGROUND
This is a patent dispute relating to implantable cardioverter defibrillators that has
been before us on four previous occasions. See Cardiac Pacemakers, Inc. v. St. Jude
Medical, Inc., 296 F.3d 1106 (Fed. Cir. 2002); Cardiac Pacemakers, Inc. v. St. Jude
Medical, Inc., 381 F.3d 1371 (Fed. Cir. 2004) (“2004 Opinion”); Cardiac Pacemakers,
Inc. v. St. Jude Medical, Inc., 144 Fed. Appx. 106 (Fed. Cir. 2005) (“2005 Reassignment
Order”); In re Cardiac Pacemakers, Inc., 183 Fed. Appx. 967 (Fed. Cir. 2006) (“2006
Writ Order”). Three of our prior decisions, the 2004 Opinion, the 2005 Reassignment
Order, and the 2006 Writ Order, are at issue in this appeal.
Implantable cardioverter defibrillators (“ICDs”) are small devices that detect and
correct abnormal heart rhythms that can be fatal if left untreated. Defibrillators work by
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administering electrical shocks to the heart, those shocks being calibrated to restore
normal heart functioning. There are different types of electrical shocks that defibrillators
can be programmed to administer, including pacing shocks (which are relatively low
power shocks), defibrillation (relatively high power shocks), and cardioversion, the
definition of which has been a source of dispute throughout the protracted litigation of
this case.
Cardiac owns various patents relating to cardiac defibrillators, including the ‘288
patent. The ‘288 patent claims a method of heart stimulation using an implantable heart
stimulator that is capable of detecting heart arrhythmias, or irregular heart rhythms, and
of being programmed to treat the arrhythmia through either single or “multimode”
operation. Multimode operation allows defibrillators to respond to arrhythmias by
applying first one type of shock and then, if unsuccessful, administering a second type
of shock. Multimode allows an implantable cardioverter defibrillator to administer
various types of shocks consecutively until the normal heart rhythm is restored.
Cardiac brought an infringement action against St. Jude, accusing St. Jude of
selling ICDs that infringed Cardiac’s patents. In 2001 the case went to trial, and a jury
returned a verdict awarding Cardiac $140 million in royalties for infringement of U.S.
Patent 4,316,472 (“the ’472 patent”). As for the ‘288 patent, the jury found the patent
valid and enforceable, but not infringed by St. Jude’s ICDs. The jury rejected St. Jude’s
arguments that the invention of the ‘288 patent was obvious in light of various prior art
references, including U.S. Patent 3,805,795 (“Denniston”) and United Kingdom Patent
Application 2,026,870 (“Duggan”). The jury also rejected St. Jude’s argument that the
2008-1296, -1347 3

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‘288 patent was unenforceable for inequitable conduct.1
Following the trial, the district court granted several post-verdict motions that
overturned the jury verdict and conditionally granted a new trial on several issues that
St. Jude had lost at trial. The court granted St Jude’s JMOL motions holding the ’472
patent not infringed and invalid, as well as St. Jude’s motion for a conditional new trial
on damages. That decision vacated the damages awarded by the jury. Cardiac has not
appealed any of the court’s decisions regarding the ’472 patent.
Regarding the ‘288 patent, the district court denied Cardiac’s request for a new
trial on infringement. Cardiac had claimed that it had been denied a fair trial on the ‘288
patent due to St. Jude’s opening statement and presentation about the inconsistent
reports of Dr. Joseph Bourland, one of Cardiac’s primary experts. The court also
granted St. Jude’s JMOL motion and request for a new trial, finding that the ‘288 patent
was invalid on the grounds of obviousness and lack of best mode. The court denied St.
Jude’s JMOL motion of unenforceability in which St. Jude argued that the ‘288 patent
was unenforceable due to Cardiac’s alleged failure to pay proper maintenance fees.
Following the district court’s decisions, Cardiac appealed the court’s grant of
JMOL of invalidity of the ‘288 patent as well as the court’s rejection of JMOL of
infringement of claim 4 of that patent. On appeal, we reversed on both issues.
Regarding validity, we held that there was “substantial evidence whereby a reasonable
jury could have reached the verdict that it would not have been obvious in March 1981
to provide an ICD that includes cardioversion,” and therefore reinstated the jury verdict
1 The jury also rejected St. Jude’s argument that the ‘288 patent failed to
comply with the best mode requirement of 35 U.S.C. § 112 ¶ 1. St. Jude has not
appealed any decisions relating to 35 U.S.C. § 112 in this appeal.
2008-1296, -1347 4

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that the “‘288 patent is not invalid for obviousness.” 2004 Opinion 381 F.3d at 1378-80.
We also found that the district court’s conditional grant of a new trial on obviousness
“exceeded the court’s discretionary authority.” Id. at 1380.
Regarding infringement, we reversed the court’s claim construction and therefore
vacated the jury’s finding of non-infringement. We held that the district court had erred
in finding that the “determining” step of claim 4 was a “step-plus-function” limitation
under 35 U.S.C. § 112 ¶ 6 and remanded the case to the district court to modify the
claim construction of the “determining” step in accordance with our opinion. Id. at 1382.
Lastly, we agreed with St. Jude that our reversal of the district court’s claim construction
entitled St. Jude to a “jury determination on the question of infringement.” Id. at 1383.
We summarized our holding as follows:
We affirm in part and modify in part the district court’s claim construction,
reinstate the jury verdict of validity, and remand for a new trial on
infringement and reassessment of damages.
Id. at 1374.
On remand, the case was returned to Judge Hamilton. Cardiac challenged the
assignment, claiming that Seventh Circuit Rule 36 required automatic reassignment of a
case remanded for a new trial to a new judge. Judge Hamilton ultimately agreed with
Cardiac and agreed to reassign the case. He then certified the issue for an interlocutory
appeal. St. Jude appealed the reassignment decision to this court, and we reversed,
finding that reassignment to Judge Hamilton would best conserve judicial resources.
2005 Reassignment Order, 144 Fed. Appx. at 106. We also noted that the case had
been remanded for “a new trial on literal infringement of one claim of one patent and for
any damages determination.” Id. at 107.
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After this remand, both sides submitted to the district court proposed claim
constructions for the disputed “determining” limitation in claim 4 of the ‘288 patent, and
the district court adopted Cardiac’s definition of “determining” with one minor change
(which is not challenged on appeal). Damages Decision, 418 F. Supp. 2d at 1027-30.
Cardiac also moved for summary judgment on St. Jude’s invalidity and unenforceability
defenses, arguing that such defenses were precluded by our 2004 Opinion and the
mandate rule. The district court disagreed and denied the motion. The court found that
“[t]he Federal Circuit’s remand left open the possibility of new invalidity and
unenforceability defenses.” Id. at 1031. According to the district court, while the
mandate rule precluded assertion of the same obviousness argument raised and lost
previously, “St. Jude’s other theories of invalidity were not within the scope of the
appealed judgment and therefore may be asserted on remand.” Id. at 1032. In arriving
at that conclusion, the district court relied on three points. First, the court found that our
remand instructions “suggested” that a new claim construction might give rise to new
invalidity defenses, particularly with regard to the adequacy of the written description
requirement. Id. Second, the court found that because St. Jude had no obligation on
appeal to present alternative arguments for invalidity, those alternative arguments were
not precluded on remand. Id. at 1032-33. Third, and most importantly, the court found
that St. Jude did not abandon or waive its invalidity defenses that became relevant only
on remand; that is, due to the court’s new claim construction of “determining,” certain
prior art that was not invalidating under the erroneous claim construction may have
become invalidating under the new claim construction. Id. at 1033.
The district court also rejected Cardiac’s motion for summary judgment on St.
2008-1296, -1347 6

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Jude’s affirmative defenses and related counterclaims. The court found that “all of St.
Jude’s arguments concerning unenforceability” could be asserted on remand. Id. The
district court found that this court’s mandate “did not even suggest, let alone require,”
that the issue of inequitable conduct be precluded from adjudication on remand. Id. at
1034.
Finally, the district court granted in part and denied in part St. Jude’s motion for
summary judgment limiting damages. The court granted St. Jude’s motion to limit
damages to ICDs that actually performed the claimed steps. Id. at 1040. The court
held that because claim 4 is a method claim, only those devices that “can be shown to
have executed” the claimed method were to be used in the damages calculation. Id. at
1042. However, the court rejected St. Jude’s motion to limit damages to U.S. sales of
ICDs. The court held that, according to Federal Circuit case law on 35 U.S.C. § 271(f),
Cardiac was not limited in its potential damages award to infringing devices that were
sold in the United States. Id. at 1042-44.
Following the district court’s ruling on claim construction and summary judgment,
Cardiac petitioned this court for a writ of mandamus directing the district court to vacate
its order allowing St. Jude to assert invalidity and inequitable conduct defenses on
remand. We denied the petition. In doing so, we stated:
[W]e repeat that we “remand[ed] for a new trial of infringement and
reassessment of damages,” including re-construction by the district court
of the “determining” provision in light of our ruling that section 112 ¶ 6 did
not apply. We also recognized that a new claim construction may raise
directly related new issues, “such as whether the now-asserted scope of
the claims is supported by the specification.”
All of the other issues on remand were finally decided, and are not subject
to reopening on remand.
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2006 Writ Order, 183 Fed. Appx. at 967 (citations omitted) (emphasis added). The case
was once more remanded to the district court.
On March 26, 2007, the district court granted Cardiac’s motion for summary
judgment of infringement, while also granting St. Jude’s motion for summary judgment
of anticipation. As a threshold matter, the district court found that because of the new,
broader claim construction, the anticipation defense was, in the words of this court, a
“directly related new issue,” and therefore not precluded by our previous decisions.
Invalidity Decision, 483 F. Supp. 2d at 738-739. The court then turned to the prior art
and found that the ‘288 patent was anticipated by two references that had been
previously presented to the jury: Denniston and Duggan. Final judgment was entered
by the district court.
Cardiac timely appealed and we have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
We review the district court's grant of summary judgment de novo, “applying the
same criteria used by the district court in the first instance.” Rothe Dev. Corp. v. Dep’t
of Defense, 545 F.3d 1023, 1035 (Fed. Cir. 2008) (quoting W.H. Scott Constr. Co. v.
City of Jackson, 199 F.3d 206, 211 (5th Cir. 1999)). Summary judgment is appropriate
“if the pleadings, the discovery and disclosure materials on file, and any affidavits show
that there is no genuine issue as to any material fact and that the movant is entitled to
judgment as a matter of law.” Fed. R. Civ. P. 56(c). We review the interpretation of our
own mandates de novo. Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1382
(Fed. Cir. 1999).
2008-1296, -1347 8

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A. Invalidity
On appeal, Cardiac argues that the district court erred in granting summary
judgment of invalidity. Preliminarily, Cardiac argues that invalidity was not at issue on
remand because the mandate rule precluded St. Jude’s anticipation defense. If we find
that anticipation was still at issue on remand, Cardiac argues that we should also find
that the district court erred in finding that genuine issues of material fact did not exist as
to whether Duggan and Denniston were anticipating references, particularly with respect
to whether Duggan teaches cardioversion and whether Denniston teaches
programming.
In response, St. Jude argues that while the mandate rule bars consideration of
obviousness on remand, it does not bar an anticipation defense. According to St. Jude,
our reversal of the “determining” construction in the 2004 Opinion created new validity
defenses due to the changed claim scope. St. Jude also claims that the ‘288 patent
was anticipated by both Denniston and Duggan, as the district court found.
We agree with Cardiac that anticipation was not properly before the district court
on remand. In the 2004 Opinion, we clearly stated that the purpose of the remand was
“for a new trial of infringement and reassessment of damages.” 2004 Opinion, 381 F.3d
at 1374. Furthermore, we explicitly “reinstate[d] the jury verdict of validity.” Id. The
mandate rule requires that the district court follow an appellate decree as the law of the
case. See Sibbald v. United States, 37 U.S. 488, 492 (1838). Therefore, according to
our explicit instructions, any new trial on remand was limited to an assessment of
infringement and a calculation of any damages.
Of course, as St. Jude rightly notes throughout its briefs, our 2004 Opinion
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altered the district court’s claim construction, and in the 2006 Writ Order we left open
the possibility that a new claim construction ruling “may raise directly related new
issues.” 2006 Writ Order, 183 Fed. Appx. at 967. As one example of a directly related
new issue, we noted the question whether the scope of the claims under the new claim
construction was supported by the specification. Id. We did not explicitly include or
exclude anticipation from the list of possible new issues raised by a new construction of
“determining.”
Thus, the question before us today is whether anticipation is a “directly related
new issue,” or whether our reinstatement of the jury’s validity verdict precludes raising
anticipation on remand. In this case, a jury found that the ‘288 patent was nonobvious
in light of numerous prior art references, including both Duggan and Denniston. At trial,
Cardiac did not dispute that the “determining” step was in the prior art and did not raise
that step as a distinguishing feature between the ‘288 patent and Duggan or Denniston.
See Reply Brief of Plaintiffs-Appellants at 12-14, 2004 Opinion (arguing that Duggan
and Denniston do not teach cardioversion); Brief of Plaintiffs-Appellants at 21-24, 2004
Opinion, 381 F.3d 1371 (Fed. Cir. 2004) (arguing that the jury heard evidence that the
prior art did not teach “cardioversion,” “multi-mode operation,” and “programmability”);
but see id. at 22 (noting evidence that the Baker reference does not perform, among
other things, the determining step). In fact, the evidence of obviousness during the trial
primarily focused on whether the prior art taught multi-mode with cardioversion. See
Brief for Defendants-Cross Appellants at 7-8, 2004 Opinion (stating that with regard to
obviousness, the only disputed limitations were the claimed invention’s ability to perform
multimode operation and the use of cardioversion). In finding the claims of the ‘288
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patent nonobvious, the jury reached the conclusion that some element necessary to
prove obviousness had not been demonstrated. For St. Jude to succeed in this appeal,
that missing element would have to have been the “determining” limitation.
In allowing St. Jude’s anticipation defense on remand, the district court stated
that due to the erroneous claim construction, “St. Jude may have chosen not to pursue
some invalidity defenses, including anticipation, at trial.” Damages Decision, 418 F.
Supp. 2d at 1033. While it is true that new anticipation arguments may arise under a
change in claim construction, that cannot be the case here because the “determining”
limitation never served as a basis for distinguishing the prior art from the ‘288 patent.
Duggan and Denniston were not only known to St. Jude before trial, but both references
were presented to the jury. The jury found that those references did not invalidate the
patent even though Cardiac did not dispute that the “determining” construction was
known in the prior art. Thus, it cannot be said that the jury’s decision hinged on the
erroneous construction of that claim. Stated differently, the jury’s verdict of validity
could not have depended upon the erroneous construction of “determining” because it
was uncontested during trial that that term was present in the prior art.
The initial, erroneous construction of “determining” was appealed by Cardiac in
order to challenge the jury’s verdict of non-infringement. While a change in claim
construction often may affect a jury’s validity determination, in this case it does not.
Therefore, St. Jude cannot now be allowed to claim that its anticipation arguments
involving Duggan and Denniston are “directly related” to the change in the construction
of “determining,” because the jury’s validity determination, which we reinstated, did not
depend upon that erroneous definition.
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We therefore reverse the district court’s summary judgment of invalidity and
reinstate the jury’s verdict that the ‘288 patent has not been shown to be invalid.
B. Inequitable Conduct
Cardiac asks this court to instruct the district court that enforceability defenses
are precluded from any remand order. According to Cardiac, the mandate rule requires
such a determination. St. Jude counters that inequitable conduct is still at issue on
remand because of the district court’s explicit ruling that “in the event of a new trial . . .
the inequitable conduct defense shall be part of the trial.” Cardiac Pacemakers, Inc. v.
St. Jude Medical, Inc., No. IP-96-1718-C, 2002 U.S. Dist. LEXIS 14767, at *143 (S.D.
Ind. July 5, 2002). Because Cardiac failed to appeal this ruling, St. Jude contends, that
decision is final.
The district court characterized St. Jude’s inequitable conduct arguments as
falling into three broad categories. The first category involved misrepresentations made
before the PTO. Damages Decision, 418 F. Supp. 2d at 1033-34. Some of these
arguments were raised by St. Jude at trial and rejected by the jury. Id. at 1034. Others
were raised and abandoned at trial. Id. The second category of arguments involved
three patents that are no longer at issue in this case. St. Jude alleges that they were
asserted even though Cardiac knew that they were invalid. Id. The district court
granted Cardiac’s motion for summary judgment on these arguments, and St. Jude did
not appeal that decision. Id.
We conclude that St. Jude has waived both categories of the arguments above.
St. Jude either failed to pursue those arguments at trial, thereby waiving the arguments,
or failed to appeal the arguments to this court. Id. St. Jude cannot now be heard to
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raise those arguments again on remand.
A third category of inequitable conduct arguments relates to misrepresentations
made by Cardiac’s expert, Dr. Bourland. The jury rejected many of St. Jude’s
inequitable conduct arguments based on Dr. Bourland’s conduct, and the district court
declined to reverse the jury’s decision. However, due to revelations that came to light
after trial, the court found that Dr. Bourland’s conduct entitled St. Jude to a new trial.
Cardiac, 2002 U.S. Dist. LEXIS 14767, at *143. In September 2006, the parties filed a
stipulation stating that St. Jude would not pursue any defense based in whole or in part
on Dr. Bourland’s conduct. Following this stipulation, Cardiac filed a renewed motion for
summary judgment on inequitable conduct. The district court never ruled on Cardiac’s
renewed motion because it entered a final judgment on anticipation on March 26, 2007.
With the stipulation removing Dr. Bourland’s conduct as a basis for an inequitable
conduct defense, St. Jude cannot now be heard to raise inequitable conduct on remand.
Any language from the district court’s opinion indicating otherwise would be an abuse of
the court’s discretion to grant a new trial. We therefore reinstate the jury’s verdict of
enforceability of the ‘288 patent and hold that enforceability should not form part of any
new trial on remand.
C. Damages
Cardiac argues that the district court erred by limiting damages to those ICDs
that actually performed cardioversion during the infringement period. According to
Cardiac, St. Jude waived its damages argument by not raising it at trial. Furthermore,
Cardiac argues, Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409 (Fed. Cir.
1996), and other cases have held that it is appropriate for patentees to recover
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damages based on sales of products with the mere capability to practice the invention.
St. Jude responds that it is not precluded from arguing for limited damages
because the remanded damages assessment was significantly altered from the
assessment that occurred at trial. Because Cardiac is now asserting only a method
claim, St. Jude contends, any damages claim must be limited accordingly.
Furthermore, in a cross-appeal, St. Jude argues that the district court erred in
concluding that Cardiac could recover damages for overseas sales of St. Jude’s ICDs
under 35 U.S.C. § 271(f).
We agree with St. Jude that damages must be limited to those devices that were
shown to infringe the ‘288 patent, but we reject St. Jude’s cross-appeal seeking to limit
overseas damages. As a preliminary matter, we find that St. Jude has not waived its
argument to limit damages. The jury was presented with a damages decision regarding
two claims of the ‘288 patent: an apparatus claim that has since been abandoned by
Cardiac and the method claim (claim 4) that is at issue on appeal. While both patent
claims were at issue during trial, St. Jude would not have benefited if it had moved to
limit damages because the damages on the apparatus claims would have covered any
sale of an apparatus that could execute the elements of the claims. However, now only
a method claim is at issue; thus, St. Jude stands to benefit from limiting damages to
devices that actually practice the method. As the district court noted, the purpose of the
waiver rule is to prevent a party from arguing on remand what it should have argued at
trial or on appeal. Damages Decision, 418 F. Supp. 2d at 1035 (citing Tronzo v.
Biomet, Inc., 236 F.3d 1342, 1347-48 (Fed. Cir. 2001)). St. Jude cannot have been
expected to raise at trial an argument that would not have reduced damages until after
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Cardiac abandoned its apparatus claim on remand.
The district court was also correct in limiting damages to sales of ICDs that
performed the steps of the claimed method. Cardiac disputes the district court’s ruling
by pointing this court to Stryker, in which we affirmed a district court’s decision awarding
damages on sales of an infringing prosthesis, even in cases in which a distal sleeve, a
required element of the claim, was not included. See Stryker, 96 F.3d at 1416-17. The
holding in Stryker is distinguishable from this case by the type of damages being sought
and the type of patent being asserted. In Stryker, the patentee was seeking lost profits
on an apparatus claim. We held, based on the particular facts of that case, that the
patentee was entitled to profits on the sale of all devices, with or without the required
distal sleeve because the sale of the device robbed the patentee of “the opportunity to
make the sale.” Id. at 1417. This was true because the sleeve, while not included in
every sale, was available to the surgeon during surgery. Id.
In the present case, however, Cardiac is not seeking lost profits on an apparatus
and therefore cannot rely on the reasoning in Stryker. Here, Cardiac seeks royalties on
its patented method. “A method claim is directly infringed only by one practicing the
patented method.” Joy Tech. v. Flakt, Inc., 6 F.3d 770, 775 (Fed. Cir. 1993). Thus,
regarding claim 4 of the ‘288 patent, infringement can only occur in cases in which the
patented method is practiced. In Stryker, the court found that because the entire
patented apparatus was “supplied” during surgery, the patent was infringed by any sale
of the device. Stryker, 96 F.3d at 1416-17. In this case it cannot be said that St. Jude
has somehow “supplied” all of the elements of Cardiac’s patented method through its
devices unless those devices actually performed all of the steps required by the claims.
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“The law is unequivocal that the sale of equipment to perform a process is not a sale of
the process.” Joy Tech., 6 F.3d at 773. Therefore, Cardiac can only receive
infringement damages on those devices that actually performed the patented method
during the relevant infringement period. We thus affirm the district court’s ruling.
We also affirm the district court’s ruling on the application of 35 U.S.C. § 271(f) to
this case. St. Jude urges us to hold that the Supreme Court’s decision in Microsoft
Corp. v. AT&T Corp., 550 U.S. 437 (2007) overturns this court’s prior precedents that
have held that § 271(f) applies to method claims. We do not agree. As St. Jude admits,
the Supreme Court “left open the question of whether Section 271(f) applies to method
claims.” Appellees’ Brief at 62. St. Jude would have us extend the reasoning behind
the Supreme Court’s decision in AT&T to overturn this court’s decision in Union Carbide
Chems. & Plastics Tech. Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005) (holding
that Section 271(f) applies to components used in the performance of patented methods
and processes). We decline to do so. While this court was not unanimous in its
approval of the holding in Union Carbide, see Union Carbide Chems. & Plastics Tech.
Corp. v. Shell Oil Co., 434 F.3d 1357, 1358-59 (Fed. Cir. 2006) (Lourie, J., Michel, J.,
and Linn, J., dissenting from order denying rehearing en banc), the Supreme Court’s
decision does not alter that holding. As a panel, we cannot reverse the holding of
another panel of this court. We thus affirm the district court’s decisions relating to
damages.
D. Reassignment
Finally, Cardiac urges this court to reassign the case to a different judge on
remand. However, there is no evidence of, and Cardiac does not appear to allege, that
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2008-1296, -1347 17
Judge Hamilton has been impartial or biased in any way during the proceedings. We
therefore refuse to designate the proper judge to preside over the remand. As an
appellate court, we must review decisions stemming from the internal procedures of
district courts around the country. We should not, however, be in the habit of dictating
to those district courts how they should conduct their internal affairs prior to any
decision being made in a particular case. We see no reason to interfere with the
internal operations of the Seventh Circuit, and leave the determination of assignment on
remand to that circuit’s internal rules and procedures.
CONCLUSION
For the foregoing reasons, we reverse the district court’s grant of summary
judgment of invalidity of the ‘288 patent and reinstate the jury verdict that the patent has
not been shown to be invalid. We also reinstate the jury’s verdict that the ‘288 patent is
not unenforceable for inequitable conduct and reverse the district court’s grant of a
conditional new trial on that issue. We remand to the district court for a determination of
damages. We affirm the district court’s rulings limiting damages to instances in which
the patented method has been performed and permitting the application of 35 U.S.C.
§ 271(f).
AFFIRMED IN PART, REVERSED IN PART, AND REMANDED

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