Jang v. Boston Scientific Corporation
872 F.3d 1275
| Fed. Cir. | 2017Background
- Dr. G. David Jang is the named inventor of U.S. Patent No. 5,922,021 directed to a coronary stent with expansion-column pairs connected by connecting-strut columns whose intermediate sections are nonparallel to their end sections. Claims 1 and 8 were asserted.
- Boston Scientific’s Express stent has alternating macroelements and microelements joined in a peak-to-valley configuration by straight (parallel) connectors; microelements may function like expansion columns.
- At trial the jury found no literal infringement but found infringement under the doctrine of equivalents (DOE). The district court then held an evidentiary ensnarement hearing and vacated the DOE verdict, entering judgment of noninfringement.
- The district court denied Jang’s JMOL motion on literal infringement and his motion for a new trial; it found Jang failed to propose an appropriate hypothetical claim for the ensnarement analysis (one submission narrowed the claim; the other did not broaden it).
- On appeal, the Federal Circuit affirmed: substantial evidence supported the jury’s no-literal-infringement verdict, and the court properly vacated the DOE verdict because Jang failed to meet his burden in the hypothetical-claim/ensnarement analysis. A cross-appeal by BSC about royalties was dismissed as improper.
Issues
| Issue | Plaintiff's Argument (Jang) | Defendant's Argument (BSC) | Held |
|---|---|---|---|
| Whether JMOL should have been granted for literal infringement of claims 1 and 8 | Microelements meet the claim’s connecting-strut-column limitations; evidence for that was undisputed so only one reasonable conclusion supports infringement | Evidence supported alternative, reasonable view that microelements are expansion columns or joined peak-to-valley by straight connectors, not the claimed peak-to-peak nonparallel connecting-strut columns | Denied; substantial evidence supports the jury’s no-literal-infringement verdict |
| Whether the DOE verdict could stand absent ensnarement (hypothetical-claim analysis) | District court should have accepted Jang’s hypothetical claims (three and five) or fashioned an acceptable hypothetical claim and proceeded to ensnarement analysis | Jang failed to propose a proper hypothetical claim: one impermissibly narrowed the claim; the other did not broaden it to cover the accused device | Affirmed vacatur of DOE verdict; Jang failed his burden to submit a proper hypothetical claim and thus to prove DOE would not ensnare prior art |
| Whether BSC waived the ensnarement defense (procedural objections) | BSC raised ensnarement late, failed to list it in the pretrial order, and effectively repackaged invalidity defenses barred earlier, prejudicing Jang | Ensnarement is a legal question the court may decide (pre- or post-trial); BSC timely raised it in limine and received adequate notice; ensnarement challenges a hypothetical claim, not validity of the asserted claims | Rejected waiver/prejudice arguments; district court permissibly held a post-verdict ensnarement hearing and BSC did not improperly repurpose an excluded invalidity defense |
| Cross-appeal: whether BSC owed past royalties after PTO canceled claims in reexamination | (BSC) Assignment agreement should excuse past royalty payments if asserted claims are later found unpatentable | (Jang) District court correctly held royalties still owed for past sales even if claims later cancelled | Cross-appeal dismissed as improper (it did not seek to enlarge the district court’s favorable judgment); the merits were unnecessary to resolve because judgment of noninfringement was affirmed |
Key Cases Cited
- DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009) (ensnarement is a legal limitation on DOE for the court to decide and may be addressed pre- or post-trial)
- Intendis GmbH v. Glenmark Pharm. Inc., USA, 822 F.3d 1355 (Fed. Cir. 2016) (describing two-step hypothetical-claim analysis to test ensnarement)
- Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360 (Fed. Cir. 2000) (hypothetical-claim method for assessing whether DOE would ensnare prior art)
- Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677 (Fed. Cir. 1990) (patentee must prove range of equivalents sought does not ensnare prior art; ensnarement concerns a hypothetical claim’s patentability)
- Streamfeeder, LLC v. Sure-Feed, Inc., 175 F.3d 974 (Fed. Cir. 1999) (a hypothetical claim may not narrow an issued claim while also broadening it; patentee must not impermissibly cut-and-trim claims in litigation)
- Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (U.S. 1997) (discusses DOE and procedures for resolving related legal issues)