DC grant of SJ reversed and remanded due to improper finding of indefiniteness

Niazi Licensing Corporation v. St. Jude Medical S.C., Inc.

Docket No. 2021-1864 (https://cafc.uscourts.gov/opinions-orders/21-1864.OPINION.4-11-2022_1934126.pdf)

TARANTO, BRYSON, STOLL

April 11, 2022

Brief Summary:   DC findings of indefiniteness reversed, but induced infringement, exclusion of expert witness report and damages findings affirmed.

Summary:  Niazi appealed DC indefiniteness finding of all but one claim of US 6,638,268 relating to cardiac cathers and no induced infringement of that one claim, the DC’s sanction excluding portions of Niazi’s technical and damages expert reports in part for being unreliable.  The DC found the claim terms “resilient” and “pliable” in all of the claims except method claim 11 rendered those claims indefinite.  Claim 11 survived as it does not include “resilient” or “pliable”, and “the catheter” of claim 11 was not indefinite.  The DC also found that claim 11 “is infringed only when the steps are performed in the order listed” and that finding was not disputed here.  The FC panel reviewed the indefiniteness finding de novo under the Nautlius “reasonable certainty” standard (Nautilus, US 2014 (“demands that a patentee apprise the public ‘of what is still open to them’” (citing Markman, US 1996)); Meds. Co., FC 2017 citing Geneva Pharms., FC 2003; Guangdong, FC 2018 (“mathematical precision” not required (citing Sonix, FC 2017 (“written description…provided objective boundaries” for term of degree, “examiner understood this phrase throughout prosecution, as did both parties’ experts during the course of litigation”); Braintree, FC 2014; Interval Licensing, FC 2014; Enzo, FC 2010 (“intrinsic evidence provided guideposts for a skilled artisan to determine the scope”, “evidence included certain dependent claims”); Datamize, FC 2005 (“claims drawn to the ‘look and feel’ of an interface screen invalid as indefinite”); Intell. Ventures, FC 2018 (“term of degree…’purely subjective’”)).  The FC panel found that while “resilient” and “pliable” “are broad, they are not uncertain” given the claim language, dependent claims, written description (“intrinsic record provides objective boundaries” like Sonix and Enzo, unlike Datamize, Int. Licensing, Int. Ventures I) and extrinsic evidence (dictionary definitions), and reversed the DC’s indefiniteness holding.

Reviewing the DC’s grant of SJ of no induced infringement of method claim 11 evidenced by St. Jude’s instructions for use (IFU) de novo (Eighth Circuit), the FC panel explained that the claims must be construed and compared to the alleged infringing method and it must be shown “that the alleged infringer ‘knowingly induced infringement and possessed specific intent to encourage another’s infringement’” (35 USC 271(b); Enplan, FC 2018; Adv. Steel, FC 2015 (SJ “no reasonable juror could find that every step of a properly construed method claim was performed by the accused direct infringer”)).  The FC panel disagreed with the DC’s construction of steps 1 and 5 claim 11 (e.g., “‘inserting’ or ‘withdrawing’ ‘the catheter’ do not include a temporal requirement”), but agreed with the DC regarding steps 2 and 3 that “Niazi failed to present sufficient evidence to carry its burden to prove direct infringement of these steps”.  The DC decision of no induced infringement was therefore affirmed.

As to the expert report and damages, the DC agreed with St. Jude that the report should be excluded because the expert “failed to ‘apportion’ between infringing and noninfringing uses” of claim 11’s method, and its award of costs and attorney fees to St. Jude.  The FC panel found no abuse of discretion in this decision (e.g., expert “did not address or rely on any evidence…that estimated the amount or percentage of sold devices that were actually used to infringe the claimed method”).

This entry was posted in Claim Construction, Claim Differentiation, Damages, Expert Testimony, Indefiniteness, Inducement to Infringe, Infringement, Medical Devices, Method claims, Prosecution History Estoppel, Royalties, Written description. Bookmark the permalink.

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