Jang v. Boston Scientific Corporation
767 F.3d 1334
Fed. Cir.2014Background
- Jang assigned patent rights to Boston Scientific and Scimed in exchange for an upfront payment and contingent royalty payments tied to sales of stents covered by Jang’s patent claims.
- Jang sued in 2005 for breach of the assignment agreement and related state-law claims, alleging petitioners failed to pay royalties for accused stent sales; jurisdiction was based on diversity.
- On remand after prior Federal Circuit appeals about claim construction (Jang I and Jang II), petitioners requested ex parte PTO reexamination; the PTO canceled the claims when petitioners did not pursue the reexamination further.
- Petitioners moved for summary judgment, arguing under Lear that an assignor cannot collect royalties for practicing claims thereafter held invalid; the district court denied the motion, relying on this court’s Kohle decision that a patentee may recover royalties until the licensee/assignee first challenges validity.
- The district court certified two questions under 28 U.S.C. § 1292(b) concerning the applicability and standard of the Kohle exception to Lear; petitioners sought interlocutory review by the Federal Circuit.
- The Federal Circuit considered whether it had jurisdiction post-Gunn and whether to permit interlocutory appeal; it concluded it had jurisdiction and denied permission to appeal, finding the criteria for §1292(b) review were not met.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does the Kohle exception to Lear apply when an assignor sues for payments tied to claims later determined invalid and no dishonest/dilatory conduct is alleged? | Jang: Kohle limits Lear’s bar; patentee may still recover royalties until assignee challenges validity. | Boston Scientific/Scimed: Lear bars royalty recovery once claims are later held invalid; Kohle shouldn’t permit recovery absent special circumstances. | Court did not decide the merits; it denied interlocutory review and expressed no view on the substantive question. |
| If Kohle applies, what standard governs when assignee never paid royalties and consistently argued claims don’t cover the accused product? | Jang: Contract language and Kohle allow recovery unless assignee first challenged validity. | Boston Scientific/Scimed: Where assignee consistently denied liability and never paid, Kohle should not permit retroactive royalties. | Court declined interlocutory review because the question may not be controlling and depends on unresolved factual issues. |
| Whether the Federal Circuit has jurisdiction to hear the interlocutory petition after PTO canceled claims (post-filing)? | Jang: Cancellation makes patent issue no longer "substantial," so Federal Circuit lacks jurisdiction. | Boston Scientific/Scimed: Federal Circuit retains jurisdiction because the patent issue was substantial at filing and Gunn does not change that. | Court held Federal Circuit jurisdiction exists based on the complaint and facts at filing; Gunn did not deprive jurisdiction here. |
| Whether an immediate interlocutory appeal under §1292(b) is appropriate here? | Boston Scientific/Scimed: The certified questions raise controlling legal issues warranting immediate review. | Jang: (implicitly) the criteria for §1292(b) not met; factual issues remain. | Court exercised discretion to deny permission for interlocutory appeal—§1292(b) criteria not satisfied. |
Key Cases Cited
- Lear, Inc. v. Adkins, 395 U.S. 653 (Sup. Ct. 1969) (a patentee cannot collect royalties for practicing claims later held invalid)
- Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561 (Fed. Cir. 1997) (recognized an exception to Lear under certain circumstances)
- Jang v. Boston Scientific Corp., 532 F.3d 1330 (Fed. Cir. 2008) (prior Federal Circuit decision addressing claim construction in this dispute)
- Forrester Environmental Servs., Inc. v. Wheelabrator Techs., Inc., 715 F.3d 1329 (Fed. Cir. 2013) (distinguishing Gunn and explaining federal interest where state rulings could conflict with federal patent adjudications)
- Grupo Dataflux v. Atlas Global Group, L.P., 541 U.S. 567 (Sup. Ct. 2004) (jurisdictional facts are measured as of the time the complaint is filed)