Jang v. Boston Scientific Corp.
493 F. App'x 70
Fed. Cir.2012Background
- Jang owns the ’021 and ’743 patents directed to an improved coronary stent.
- Jang assigned the patents to Scimed (a Boston Scientific subsidiary) under an Assignment Agreement.
- Scimed paid $50 million upfront and $10 million later; up to $110 million contingent payments remained.
- Jang alleged Scimed breached the Assignment Agreement by not paying remaining contingent payments.
- The district court adopted a Markman construction requiring unattached connecting struts in a connecting strut column, affecting infringement analysis.
- The Federal Circuit previously vacated and remanded for specifying how claim constructions affect infringement findings; district court then entered revised consent judgment and order.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether ‘connecting strut column’ includes unattached struts. | Jang: no basis to limit; no explicit unattached requirement. | BSC: unattached required by claim construction; aligns with figures. | Reversed: unattached limitation improperly imported. |
Key Cases Cited
- ICU Med., Inc. v. Alaris Med. Sys., 558 F.3d 1368, 558 F.3d 1368 (Fed. Cir. 2009) (limiting term only where warranted by the patent disclosure as a whole)
- Phillips v. AWH Corp., 415 F.3d 1303, 415 F.3d 1303 (Fed. Cir. 2005) (intrinsic evidence governs claim construction; avoid narrowing based on a single embodiment)
- Howmedica Osteonics Corp. v. Wright Med. Tech., 540 F.3d 1337, 540 F.3d 1337 (Fed. Cir. 2008) (single embodiment does not limit broad claim language absent clear intention)
- Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 473 F.3d 1173 (Fed. Cir. 2006) (mere disclosure of embodiments does not limit claim scope)