G. David Jang, M.D. v. Boston Scientific Corp. and SciMed Life Systems, Inc.


Docket No. 2014-134

DYK, PLAGER, LINN
September 16, 2014

Brief Summary: Request for interlocutory appeal denied because FC panel was not convinced that that would “materially advance the ultimate termination of the litigation” (It is not clear that the legal issues identified in the questions will in fact be controlling, and each question depends on the resolution of factual issues not yet addressed by the district court.”)

Summary: Boston Scientific petitioned for permission to appeal DC denial of summary judgment. In June, the FC ordered the parties to address whether it had jurisdiction or whether the case should be transferred to the USCA for the 9th Circuit. This case has been before the FC twice before. Dr. Jang assigned certain of his patent rights to Boston in exchange for an upfront payment and the promise of ongoing royalties. Jang sued Boston for breach of contract and Boston filed requests for ex parte reexamination. During reexamination, the claims were cancelled. Boston then moved for SJ, arguing that under Lear, Inc. v. Adkins (US 1969), it cannot be required to make payments related to invalid claims. The request was denied by the DC under Kohle (FC 1997), concluding Jang could seek royalties prior to a challenge to the validity of the patents. The FC opinion first explained that it has jurisdiction “[b]ecause the patent law issues raised in the complaint were at that time substantial…and because the Gunn test was otherwise met in all respects” (Gunn, US 2013). It also decided not to take the interlocutory appeal because it was not convinced that it would “materially advance the ultimate termination of the litigation” (“As a general proposition, our courts grant interlocutory review in these multi-faceted patent cases only rarely…It is not clear that the legal issues identified in the questions will in fact be controlling, and each question depends on the resolution of factual issues not yet addressed by the district court.”)

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