Diomed, Inc. v. AngioDynamics, Inc.

*134 MEMORANDUM & ORDER

Pending before the Court in these consolidated patent cases are a motion to exclude expert testimony and several cross-motions for summary judgment.

I. Background

The plaintiff, Diomed, Inc. (“Diomed”), develops laser technology that is designed to treat varicose veins in a minimally invasive manner. It sells a product under the mark EVLT® which apparently relates to U.S. Patent No. 6,398,777 (“the ’777 patent”), owned by Diomed.

In January, 2004, Diomed filed a complaint alleging that AngioDynamics, Inc. (“AngioDynamics”) infringed the ’777 patent. The case was assigned at that time to the session of United States District Judge Richard G. Stearns. AngioDynamics is a market competitor of Diomed. It is alleged to have infringed the ’777 patent (and/or to have induced or contributed to infringement by others) through its manufacture, use, marketing and sales of its so-called EVLS Procedure Kit, a system for laser treatment of varicose veins.

In its answer to plaintiffs complaint, AngioDynamics denies the allegations of infringement and asserts that the ’777 patent is invalid both on its face and as applied to the actions of AngioDynamics. It filed counterclaims seeking declaratory judgments against Diomed and a third party, Endolaser Associates, LLC (“Endolaser”), that the ’777 patent has not been infringed and is invalid. According to the counterclaim, Endolaser jointly owns the ’777 patent with ’ Diomed. AngioDynamics later amended its affirmative defenses and counterclaims to allege patent misuse, violation of federal antitrust law and violation of Mass. Gen. Laws ch. 93A (“Chapter 93A”).

In March, 2004, Diomed filed a separate complaint against Vascular Solutions, Inc. (“VSI”) alleging that it had also infringed the ’777 patent through its use and marketing of a product designed to treat varicose veins. VSI sells a laser and associated treatment kit under the name “Varilase”. In its answer, VSI denies'infringement, asserts that the ’777 patent is invalid and counterclaims for declarations of invalidity and non-infringement. VSI has amended its answer twice to assert that Diomed’s action is barred by inequitable conduct and to seek a declaration that the ’777 patent is unenforceable.

In May, 2004, Endolaser filed a motion to dismiss the counterclaims against it on the ground that it has transferred all of its rights in the ’777 patent to Diomed. After considering written and oral arguments on behalf of Endolaser and AngioDynamics, Judge Stearns allowed Endorser’s motion to dismiss in an order entered on November 12, 2004.

In February, 2005, the Diomed cases against AngioDynamics and VSI were consolidated. 1 Judge Stearns bifurcated AngioDynamics’ counterclaims against Diomed for violations of antitrust law and Chapter 93A and ordered that discovery with respect to those claims would be stayed until the patent infringement and validity claims had been decided. All parties have demanded that their claims be tried to a jury.

A Markman hearing for the purpose of claim construction was held in March, *135 2005, and Judge Stearns entered a memorandum and order (“M & 0”) construing the claims soon thereafter. See Diomed, Inc. v. Angiodynamics, Inc., No. Civ.A. 04-CV-10019-RGS, 2005 WL 834875 (D.Mass. April 12, 2005). Diomed has alleged that both defendants infringe independent Claims 9 and 21, and dependent Claims 10-14 and 16-19, of the ’777 patent. Id. at *1.

Judge Stearns concluded that the ’777 patent comprises a “method” of treating blood vessels through the use of laser energy and that Claim 9 thereof addresses the means of inserting, positioning and emitting laser energy into a blood vessel. Id. at *1-2.

Construing the insertion and placement steps of Claim 9, Judge Stearns found that the fiber optic line used to emit laser energy required an uncoated tip and that positioning the laser necessarily required

deliberately putting the uncoated tip of the fiber optic line in physical contact with the wall of the blood vessel, which requires the drainage of blood and compression of the vein.

Id. at *5-6. Construing the third step whereby laser energy is emitted, the court declared that the fiber optic tip was to be maintained in physical contact with the interior surface of the blood vessel wall while laser energy was emitted in order to decrease the diameter of the blood vessel. Id. at *7.

The parties also sought construction of the term “emptying” as it was used in dependent Claim 10: “[t]he method of claim 9, further comprising emptying the blood vessel prior to emitting said laser energy”. Judge Stearns interpreted “emptying” to mean “the process of emptying most, but not necessarily all of the blood from the blood vessel”. Id. at *8. Although the parties sought construction of additional terms, Judge Stearns concluded that the remaining disputes did not require resolution by the court because the terms were not ambiguous or material. Id. at *1 n. 2.

Discovery in the consolidated cases continued during 2005 and the parties filed motions for summary judgment. Oppositions and replies to those motions were filed in January and February, 2006, and oral argument was scheduled for June 1, 2006. In May, however, Judge Stearns discovered that he was being treated by a physician who had been asked to serve as an expert witness of Diomed. After seeking and considering the parties’ positions concerning recusal or disqualification, Judge Stearns entered an order recusing himself from the case on June 26, 2006. Shortly thereafter, the matter was assigned to this session.

Now pending for consideration by this Court are 1) a joint motion of defendants AngioDynamics and VSI to exclude expert evidence upon which plaintiff is expected to rely, 2) Diomed’s motion for summary judgment with respect to patent validity and enforceability, 3) Diomed’s motion for summary judgment on the issue of patent infringement, 4) VSI’s motion for summary judgment on infringement and 5) AngioDynamics’ motion for summary judgment on infringement. After first considering the evidentiary motion, the Court will address the cross-motions for summary judgment by order of topic, beginning with the issues of patent validity and enforceability and concluding with the issue of infringement.

II. Defendants’ Motion to Exclude Evidence

Defendants VSI and AngioDynamics move this Court to bar Diomed from presenting any evidence, testimony, analyses or opinions of two purported experts, Philip Green (“Mr. Green”) and Dr. Luis Na *136 varro (“Dr. Navarro”), on the grounds that certain expert opinions of those witnesses were not timely disclosed. Mr. Green is expected to provide expert testimony relating to damages whereas Dr. Navarro, one of the inventors of the ’777 patent, is expected to testify both as a fact witness and as an expert witness.

Rule 26(a)(2) of the Federal Rules of Civil Procedure obligates parties to disclose the identities of potential expert witnesses in accordance with any court-imposed scheduling order. Moreover, where those witnesses are either employees whose duties include the regular provision of expert testimony or non-employees who are “retained or specially employed to provide expert testimony”, the party using such a witness is to provide a written report containing, inter alia, “a complete statement of all opinions to be expressed and the basis and reasons therefor”.

In this case, the parties were directed to provide all expert reports by June 22, 2005, and to serve or notice all discovery requests by October 15, 2005. Mr. Green was timely identified as an expert witness on the issue of damages and his expert report was produced on June 22, 2005. That report was supplemented, however, in December, 2005, and defendants now seek to exclude the opinions presented therein. Dr. Navarro was identified as a potential expert witness but no expert report was produced with respect to his expected testimony. Defendants now seek to exclude from evidence certain opinions that Dr. Navarro reached on the basis of experiments he conducted after the deadline for filing expert reports.

Diomed opposes defendants’ joint motion. It contends that precluding Mr. Green’s evidence is unwarranted because defendants had sufficient foreknowledge of the analysis contained in his supplemental report and the delay in producing that supplement was caused by defendants’ conduct.

With respect to Dr. Navarro, Diomed asserts that it had (and continues to have) no obligation to provide an expert report because Dr. Navarro is neither an employee of Diomed nor was he retained for the purpose of providing expert testimony. A license agreement between Diomed and Endolaser (a company of which Dr. Navarro is a principal and which assigned to Diomed all its rights and interest in the ’777 patent) provides that Dr. Navarro is to be paid $3,500 per day for services performed in connection with any action to enforce the ’777 patent. Regardless of whether an expert report is required for Dr. Navarro, Diomed contends that defendants have had adequate knowledge of his opinions thereby negating any argument that they have suffered prejudice.

Unless a party’s failure to disclose information required by Rule 26(a) is “substantially justified or harmless”, the non-compliant party is forbidden from using such information as evidence at trial or in support of a motion for summary judgment. Poulis-Minott v. Smith, 388 F.3d 354, 358 (1st Cir.2004) (quoting Lohnes v. Level 3 Commc’ns, Inc., 272 F.3d 49, 60 (1st Cir.2001)). See also Fed. Rule Civ. P. 37(c)(1).

In ruling upon a motion to exclude expert testimony, the trial court must bear in mind the intent of the disclosure rules “to facilitate a fair contest with the basic issues and facts disclosed to the fullest practical extent”. Poulis-Minott, 388 F.3d at 358 (quoting Lohnes, 272 F.3d at 60) (internal quotation marks omitted). Appellate court review of such rulings concentrates upon factors such as the

history of the litigation, the proponent’s need for the challenged evidence, the justification (if any) for the late disclo *137 sure, and the opponent’s ability to overcome its adverse effects.

Macaulay v. Anas, 321 F.3d 45, 51 (1st Cir.2003) (citations omitted). Surprise and prejudice are also factors to be considered as is the effect of late disclosure upon the trial court’s docket. Id. (citations omitted).

In Mr. Green’s initial expert report, he apparently focused upon a “reasonable royalty” theory of damages. His supplemental report, however, contains an additional theory based upon lost profits. Defendants contend that they were unaware of plaintiffs intent to rely upon a lost-profits theory until Mr. Green made reference to it at his deposition in September, 2005. Diomed responds that the omission of a lost-profits analysis in Mr. Green’s initial report resulted from defendants’ failure to provide full disclosure of customer information. Furthermore, plaintiff suggests that any prejudice suffered by defendants is not so significant as to warrant exclusion of the expert opinion.

At this stage of the litigation (with no trial date having been set), the Court finds Diomed’s position more persuasive than defendants’. It appears that the present dispute may have resulted from a misunderstanding with respect to discovery requests made by Diomed. While Diomed contends that it persisted in requesting information pertinent to its lost-profits theory, defendants maintain that the discovery requests lacked sufficient specificity to encompass customer-specific information upon which plaintiffs lost-profits theory depends.

In any event, despite Diomed’s failure to comply with the letter of Rule 26(a), defendants have not shown sufficient prejudice to merit wholesale exclusion of Mr. Green’s opinion on lost profits. Defendants were alerted to plaintiffs potential reliance upon a lost-profits theory when they received Mr. Green’s initial report in June, 2005, and were again apprised of that theory at Mr. Green’s deposition in September, 2005. The supplemental report was produced in December, 2005, and the issue of damages is not pertinent to the pending motions for summary judgment.

Nevertheless, because of Diomed’s failure to comply fully with its discovery obligations, Diomed will make Mr. Green available for a short supplemental deposition, solely on the issue of the lost-profits theory, with all costs (except defendants’ legal fees) to be borne by Diomed. Defendants will then be given leave to identify a rebuttal expert, if desired, and to produce a rebuttal report.

Defendants also contend that Diomed should be foreclosed from presenting evidence relating to experiments that Dr. Navarro conducted after the June 22, 2005, deadline for expert reports. Although Dr. Navarro was identified as a potential expert witness, Diomed produced no expert report concerning his opinion (either before or after the deadline) on the ground that it had no obligation to do so.

Defendants dispute the proposition that Dr. Navarro is not subject to the full spectrum of expert disclosure rules because 1) fact witnesses are subject to such rules where their testimony is a product of specialized knowledge and exceeds purely percipient observations and 2) opinions derived from Dr. Navarro’s experiments fall squarely within the expert disclosure requirements because they were performed for the purpose of supporting plaintiffs case. Although some of the experiments were conducted in connection with a presentation that Dr. Navarro was to make at a medical conference, defendants assert that those experiments were also designed to benefit plaintiffs litigation.

*138 Finally, defendants contend that, even if Diomed mistakenly believed that Dr. Navarro’s opinions were not subject to the expert disclosure rules, it is fair that the consequences of that mistake be borne by Diomed rather than defendants. They assert that allowing plaintiff to rely on those opinions prejudices them because of the additional time, effort and costs they must now expend to rebut such evidence.

Diomed maintains that 1) Dr. Navarro need not prepare an expert report because he was not retained for the purpose of providing an expert opinion and 2) in any event, excluding Dr. Navarro’s opinion is unwarranted because defendants have suffered no prejudice. Diomed contends that defendants were fully aware of Dr. Navarro’s experiments and that they deposed him at least once since Diomed expressed its intention to rely upon those experiments. Plaintiff suggests that defendants’ knowledge about the content of and bases for Dr. Navarro’s opinion qualifies as a sufficient substitute for an expert report.

Whether Dr. Navarro was “retained” as an expert witness by Diomed is debatable. Diomed is compensating him pursuant to a license agreement that was apparently made when Endolaser assigned its interest in the ’777 patent to Diomed. While the terms of Dr. Navarro’s services under that agreement do not, in themselves, establish him as a retained expert, there is a sustainable argument that Dr. Navarro qualifies as a retained expert under the circumstances of this case.

Balancing the reasonableness of Diomed’s proposition that Dr. Navarro need not provide an expert report against its contention that defendants have suffered no prejudice in the absence of such a report, the Court will deny defendants’ motion to exclude expert opinions of Dr. Navarro but will require Diomed to produce an expert report concerning those opinions that complies with Fed.R.Civ.P. 26(a)(2). Furthermore, Diomed will henceforth treat Dr. Navarro as an expert witness subject to Rule 26(a)(2).

III. Plaintiff’s Motion for Summary Judgment with Respect to Patent Validity and Enforceability

In their respective answers, defendants AngioDynamics and VSI seek declarations, and assert affirmative defenses, that the ’777 patent is invalid and unenforceable. Plaintiff now moves for summary judgment with respect to both issues.

To be protected under the patent laws, an invention must be novel, useful and not obvious. See Graham v. John Deere Co., 383 U.S. 1, 3, 12, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). The validity of existing patents is presumed, 35 U.S.C. § 282, and can be overcome only by clear and convincing evidence. Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1372 (Fed.Cir.2005) (citation omitted). Because a judge tasked with ruling upon a motion for summary judgment “must view the evidence presented through the prism of the substantive evidentiary burden”, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), a patentee is entitled to summary judgment with respect to the patent’s validity where a reasonable jury could not find clear and convincing evidence of the patent’s invalidity.

A. Validity

Defendants allege in their counterclaims that the ’111 patent is invalid because it 1) was anticipated or rendered obvious by prior art, 35 U.S.C. §§ 102-03, and 2) was not sufficiently described in the patent ap *139 plication, id., § 112. 2

Defendants’ current position with respect to § 112, which pertains to the written specification of patents, is unclear. In their opposition to Diomed’s motion for summary judgment on the issue of patent validity, defendants declare their intent to withdraw their § 112 counterclaim. In their memoranda relating to the issue of patent infringement, however, defendants press the § 112 counterclaim/defense, contending that ambiguity of claim construction persists despite the Marhnan ruling and that, if the elements of compression and drainage are interpreted as Diomed contends, the ’777 patent is subject to challenge under § 112.

Thus, the Court declines to address the § 112 issue with respect to validity because defendants have withdrawn their § 112 counterclaim in that regard. On the other hand, the Court will assess the merits of the § 112 counterclaim/defense when it attends to the matter of infringement because defendants rely upon that statute in support of their arguments of non-infringement.

1. Anticipation — Legal Principles

In accordance with the prerequisite of novelty, an invention may not be patented where it was anticipated and is, consequently, not new. See 35 U.S.C. § 102. Whether anticipation renders an invention unpatentable is a question of fact, Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed.Cir.2002) (citation omitted), but the burden of proof by clear and convincing evidence continues to be borne by the challenger. Id.

As a general matter, the patentability of an invention is subject to an anticipation challenge where the invention was, prior to the patent application date, 1) known by others, 2) used by others or the public, 3) already patented, 4) sold, 5) described in a printed publication, 6) abandoned or 7) invented by someone other than the applicant. 35 U.S.C. § 102.

Anticipation of an invention by pri- or art will not invalidate a patent unless the prior art reference “disclose[s] all the elements of the claimed invention or their equivalents functioning in essentially the same way”. Carter-Wallace, Inc. v. Gillette Co., 675 F.2d 10, 15 (1st Cir.1982) (quoting Shanklin Corp. v. Springfield Photo Mount Co., 521 F.2d 609, 616 (1st Cir.1975)) (internal quotation marks omitted). Thus, “each and every limitation [must be] found either expressly or inherently in a single prior art reference”. Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed.Cir.2003) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed.Cir.1998)). An element is “inherent” if it is “necessarily present”. SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (Fed. Cir.2005) (citations omitted). See also Cont’l Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed.Cir.1991) (“Inherency ... may not be established by probabilities or possibilities”). In addition, an anticipatory prior art reference must “enable one of skill in the art to make and use the claimed invention”. Id. (quoting Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374 (Fed.Cir.2001)).

To determine whether an invention was anticipated by prior art, the court *140 must first ascertain the scope and content of applicable prior art. Next, each element of the pertinent claim must be compared against the prior art reference. See Schumer, 308 F.3d at 1315 (stating that proof of anticipation generally requires “testimony from one skilled in the art” which “explains in detail how each claim is disclosed in the prior art reference”) (citations omitted). Consideration of extrinsic evidence is permitted to support a contention that an element of the claimed invention was inherently taught by a prior art reference. See In re Robertson, 169 F.3d 743, 745 (Fed.Cir.1999); Biogen, Inc. v. Amgen, Inc., 973 F.Supp. 39, 42 (D.Mass.1997) (“Extrinsic evidence may be considered to explain, but not to expand on, the meaning of an anticipatory reference.”) (quoting Ciba-Geigy Corp. v. Alza Corp., 864 F.Supp. 429, 436 (D.N.J.1994)).

2. Obviousness — Legal Principles

Where a patent has not been anticipated by a single prior art reference, it may be deemed invalid, nevertheless, if

the differences between the subject matter sought to be patented and the prior art [viewed in total] are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

35 U.S.C. § 103(a). Cf. Velander v. Garner, 348 F.3d 1359, 1362-63 (Fed.Cir.2003) (reasoning that, “[b]ecause [the defendant] did not identify a single reference that anticipated all of the limitations of any of the claims at issue”, he was understood to have brought a challenge based on obviousness).

Although the validity of a patent is ultimately a question of law, the determination of “non-obviousness” requires a case-by-case, factual assessment. Graham, 383 U.S. at 17-18, 86 S.Ct. 684. In considering whether a patent is obvious owing to the state of the art at the time of the alleged invention,

the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.

Id. (citation omitted). See also Omegaflex, Inc. v. Parker Hannifin Corp., 425 F.Supp.2d 171, 180-81 & nn. 16-19 (D.Mass.2006) (elaborating on the factors listed above).

Where prior art manifests all elements of a challenged invention, the court must also consider:

(1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and

(2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success.

Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed.Cir.2006) (quoting Velander v. Garner, 348 F.3d 1359, 1363 (Fed. Cir.2003)). Those two additional factors have been designated as the requirement of “motivation”, that is, that “some teaching or suggestion within the prior art” provided motivation to combine those elements as did the claimed inventor. Crown Operations Int’l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1376 (Fed.Cir.2002) (citations *141 omitted). Notably, the “motivation to combine need not be found [exclusively] in prior art references, but equally can be found in the knowledge generally available to one of ordinary skill in the art”. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1322 (Fed.Cir.2005) (quoted cases and internal quotation marks omitted).

3. Analysis

Defendants contend that the ’777 patent is invalid because it was anticipated or rendered obvious by means of the following prior art references: 1) an article and video presentation by Dr. Brunello Puglisi (“Puglisi”), 2) an article by Dr. Gerald O’Reilly (“O’Reilly”) and others, 3) inventions by Brian Farley (“Farley”) and others which were patented under U.S. Patent Nos. 6,638,273 and 6,033,398, 4) an article and video presentation by A. Mazza (“Mazza”) and/or 5) an article by Ken Biegeleisen (“Biegeleisen”).

As construed by Judge Stearns, Claim 9 of the ’777 patent involves 1) inserting a fiber optic line with an uncoated tip into a blood vessel, 2) deliberately placing that tip against the blood vessel wall and 3) maintaining physical contact between the tip and the vessel wall as laser energy is emitted thereby decreasing the diameter of the blood vessel.

Dependent upon Claim 9 are claims comprising, inter alia, 1) the emptying of most, but not necessarily all, of the blood within the vessel prior to laser emission (Claim 10), 2) use of a fiber optic line that is approximately 200 microns to 600 microns in diameter (Claims 12 and 13), 3) the manual application of external compression prior to laser emission to ensure contact between the tip of the fiber optic line and the blood vessel wall (Claim 17) and 4) emission by bursts of laser energy in an approximate range of 500 nanometers to 1100 nanometers (Claims 18 and 19).

For Diomed to prevail on its motion for summary judgment, it must show that the elements of Claim 9, as further delineated by the claim construction and dependent claims, 1) were not contained in a single prior art reference thereby anticipating the ’777 patent and 2) were not rendered obvious by the existence of one or more prior art references. The Court will discuss the prior art references seriatim in order to determine, first, whether any particular reference anticipated the ’777 patent and then, whether the prior art, as a whole, rendered plaintiffs invention obvious.

a. Puglisi Article and Video

As an initial matter, Diomed contends that a five-minute video of Puglisi performing surgery does not constitute “prior art” because it is not a “printed publication”. See 35 U.S.C. § 102. Defendants challenge that characterization by focusing on the term “publication”. They assert that a video may qualify as prior art where it was sufficiently disseminated to the public.

The Court is unpersuaded by defendants’ proposition. The definition of “printed” cannot be stretched to include a presentation which does not include a paper component or, at minimum, a substitute for paper such as the static presentation of slides. Cf. In re Klopfenstein, 380 F.3d 1345 (Fed.Cir.2004). In the Klopfenstein case, upon which all parties rely, the circuit court held that a printed slide presentation that was pasted onto poster boards and displayed at a conference for two and a half days constituted a printed publication. The court contrasted that reference with purely oral presentations that included neither slides nor paper copies of the presentation. Id. at 1349 n. 4.

*142 In this case, defendants liken the Puglisi video to the presentation in the Klopfenstein case by reason of the video’s dissemination to a large number of people over several years. That fact alone, however, does not cure the absence of any “print” component to the video, an element that was met by the print-out of slides described in the Klopfenstein case. Consequently, the video is not a “printed publication” under 35 U.S.C. § 102.

Nor do defendants demonstrate, or even argue, that the Puglisi video anticipated the ’777 patent by establishing a state of knowledge or use by others in the United States. See Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1369 (Fed.Cir.2000); 35 U.S.C. § 102(a). Defendants offer evidence that Puglisi showed his video at conferences in Austria, Belgium, France and Italy, and that he made oral presentations in accompaniment therewith, speaking in French or Italian. The inventors of the ’777 patent were apparently unaware of the video and of Puglisi’s work. In view of those facts, defendants cannot demonstrate “clear and convincing” proof that the information presented in the video was “known or used by others in this country” as is required under § 102(a).

With respect to a 1989 article by Puglisi entitled “Application of the ND-YAG laser in the treatment of varicose syndrome”, Diomed asserts that no anticipation is evident because the method described in the article does not entail placing an uncoated fiber optic tip directly against a blood vessel wall. In addition, the article purportedly fails to include any reference to drainage or compression.

Defendants respond that the procedure described in the article promotes physical contact with the vein wall, teaches drainage and compression and is not inconsistent with the use of an uncoated fiber optic tip. Indeed, defendants rely upon the Puglisi video as evidence that the procedure in fact employed an uncoated tip.

After considering the Puglisi article, the Court resolves the matter in Diomed’s favor. To start, the four-page article makes no explicit reference to the nature of the fiber optic tip, its placement against the vein wall, the employment of compression prior to the procedure or drainage of the vein. The article’s ambiguity on those issues compels defendants to rely upon extrinsic evidence to prove that the claims of the ’777 patent are inherently encompassed within Puglisi’s procedure.

That extrinsic evidence, namely Puglisi’s video and deposition testimony, falls short of establishing a genuine dispute of material fact concerning the anticipation of the ’777 patent by Puglisi’s article. First, because Puglisi testified at his deposition that there were differences between the procedures depicted in the video and his article, the value of the video as extrinsic evidence is suspect. Second, Puglisi also testified that the procedure discussed in his article employed a laser with a covered tip. That fact alone forecloses anticipation of the ’777 patent. Finally, although Puglisi’s deposition testimony implied that physical contact between the fiber optic tip and blood vessel wall may have occurred during his procedure, there is insufficient evidence that such contact was an inherently necessary component thereof.

b. O’Reilly Article

Diomed asserts that an article published by O’Reilly and others in 1982 entitled “Transcatheter Fiberoptic Laser Coagulation of Blood Vessels” did not anticipate the ’777 patent because it did not disclose 1) contact between the laser tip and blood vessel wall, 2) compression and 3) drainage of blood. The four-page article describes a potential method of isolating intracranial aneurysms by means of transmitting laser *143 energy intra-arterially. To describe the procedure, O’Reilly and his co-authors document experiments they performed on the central auricular arteries of rabbits.

Defendants make an effective argument that the procedure taught in the . O’Reilly article employed a bare-tipped fiber. They are unable, however, to show evidence of deliberate and persistent contact between that fiber optic tip and the blood vessel wall. That the veins involved in the experiment were narrow and that blistering occurred as a result of the procedure is insufficient proof that deliberate physical contact was an inherently necessary component of O’Reilly’s method. Consequently, the Court concludes that the O’Reilly article did not anticipate the ’777 patent.

c. Farley ’398 Patent

U.S. Patent No. 6,033,398 (“the ’398 patent”), granted to Farley and others in 2000, addresses a “method and apparatus for treating venous insufficiency using directionally applied energy”. Diomed contends that the ’398 patent does not support defendants’ counterclaims because the fiber optic laser described therein was not bare-tipped and in fact, because of its particular construction, was incapable of making contact with a blood vessel wall. In addition, Diomed asserts that the patent fails to refer to the use of compression or drainage in conjunction with the laser.

Defendants dispute the contentions of Diomed, asserting that the ’398 patent discloses use of an uncoated fiber tip, external manual compression, drainage and direct contact between the tip and vein wall. In response to plaintiffs assertion that the apparatus described in the ’398 patent is incapable of achieving direct contact, defendants point out that the patent encompasses numerous forms of energy emission not all of which foreclose the possibility of direct contact.

Whether the ’398 patent anticipated the ’777 patent-presents a closer question than the previously discussed examples of prior art. First, the ’398 patent describes a procedure for treating varicose veins that is substantially similar, on its face, to the method encapsulated in the ’777 patent. Farley’s invention is described as follows:

A method for venous repair comprises the steps of introducing a catheter having a working end and means for applying energy'located at the working end to a treatment site in the vein lumen; positioning the means for heating adjacent the treatment site in the vein lumen; directionally emitting energy from the means for heating to selectively heat the treatment site and cause shrinkage of venous tissue at the treatment site; and terminating the emission of energy from the means for heating after sufficient shrinkage to restore vein competency.... In [one of several] aspect[s] of the invention, an optical energy source may be used to impart directional energy to selectively heat venous tissue.

Comparing the two patents more specifically, defendants make a cogent argument that external manual compression was disclosed in the ’398 patent where it states that a “physician may palpate the vein into apposition with the electrodes to achieve good contact between the electrodes and the vein wall”.

Defendants rest on weaker footing in other respects, however. Although some descriptions in the ’398 patent support an inference that an uncoated laser tip could be used, that contention is undermined by the invention’s deployment, of a light-diffusing device and its pictorial representation of an apparatus with an uncoated section below a covered tip. .

Furthermore, defendants fail to adduce sufficient evidence that the ’398 patent *144 teaches direct contact. Indeed, the description of the method reported in the ’398 patent strongly suggests that no direct contact is to occur. The most pertinent paragraph of the ’398 patent teaches a “directional” application of energy “toward” a blood vessel wall. Furthermore, one of the principal independent claims of the ’398 patent speaks of placing the energy-emitting apparatus “adjacent the treatment site” in order to “directionally emit[ ] energy”. Those descriptive terms, while not invariably inconsistent with a teaching of direct contact, imply the absence of such contact. Likewise, although the patent at one point refers to placement of the laser tip “in apposition with the vein wall”, that statement does not approximate clear and convincing evidence of contact.

d. Farley ’273 Patent

Defendants also argue that U.S. Patent No. 6,638,273 (“the ’273 patent”) which was granted to Farley and others anticipated the ’777 patent of Diomed. While conceding that the ’273 patent does not expressly refer to direct physical contact between an uncoated laser tip and vein wall,' defendants contend, nevertheless, that the patent inherently teaches that method. Furthermore, they assert that the ’273 patent explicitly discloses external compression for the purpose of draining blood.

Diomed responds in a reply brief that defendants failed to disclose their reliance upon the ’273 patent in various discovery materials including interrogatory answers, depositions and their expert report. Thus, notwithstanding the merits of defendants’ position, Diomed asserts that they should be foreclosed from relying upon the ’273 patent. Diomed further disputes the merits of defendants’ contentions, noting that the ’273 patent does not disclose the use of any fiber optic