Case Information
*2 Before L INN , P LAGER , and D YK , Circuit Judges . L INN , Circuit Judge .
Plаintiff-Appellant G. David Jang, M.D. (“Jang”) ap- peals the United States District Court for the Central District of California’s revised consent judgment, see Revised Consent Judgment, Jang v. Boston Scientific Corp. , No. 05-0426 (C.D. Cal. Aug. 25, 2011), ECF No. 268 (“ Consent Judgment ”), and revised stipulated summary judgment order, see Revised and Amended Stipulation and Order, Jang v. Boston Scientific Scimed Inc. , No. 05- 0426 (C.D. Cal. Aug. 30, 2011), ECF No. 269 (“ ”), both of which are premised on the district court’s con- struction of the claim term “connecting strut column,” see Claim Construction Order, Jang v. Boston Scientific Corp. , No. 05-0426 (C.D. Cal. Aug. 25, 2006), ECF No. 99 (“ Markman Order ”). Because the district court errone- ously imported a limitation from the specification into the term “connecting strut column,” this court reverses the district court’s claim construction, vacates the Consent Judgment and based thereon, and remands for further proceedings consistent with this opinion.
I. B ACKGROUND In 1999, the United States Patent and Trademark Of- fice (“PTO”) issued U.S. Patents No. 5,954,743 (“’743 Patent”) and No. 5,922,021 (“’021 Patent”) (a continua- tion-in-part of the ’743 Patent) to inventor Jang. The patents are directed to an improved coronary stent for use in balloon angioplasty catheterization procedures.
Figure 9D of the ’021 Patent, as modified in the at 10 and Appellant’s Br. at 13, (“Fig.1” in this opinion) represents Jang’s flexible stent design:
Fig.1 Jang’s claimed stent is comprised of “expansion columns” (inside the dotted-boxes) and “connecting strut сolumns” (inside the solid middle box). The connection strut col- umns join the expansion columns together and provide structural flexibility and integrity.
Exemplary claim 1 of the ’021 Patent recites, in perti- nent part:
1. A stent in a non-expanded state, comprising: a first expansion strut pair including a first expansion strut positioned adjacent to a second exрansion strut and a joining strut . . . that cou- ples the first and second expansion struts at a dis- tal end of the first expansion strut pair, a plurality of the first expansion strut pair forming a first expansion column; a second expansion strut pair . . . , a plurality of the second expansion strut pair forming a sec- ond expansion column;
a first connecting strut inсluding a first con- necting strut proximal section, a first connecting strut distal section and a first connecting strut in- termediate section, the first connecting strut proximal section being coupled to the distal end of the first expansion strut pair in the first expan- sion column and the first connecting strut distal section being coupled to the proximal end of thе second expansion strut pair of the second expan- sion column, a plurality of the first connecting strut forming a first connecting strut column that couples the first expansion column to the second expansion column, the first connecting strut in- termediate section being non-parallel to the first connecting strut proximal and distal sections, wherein the first exрansion strut of the first ex- pansion strut pair in the first expansion column has a longitudinal axis offset from a longitudinal axis of the first expansion strut of the second ex- pansion strut pair in the second expansion col- umn.
’021 Patent col. 18 ll. 9-40 (emphasis added to disputed term). The specifications of the ’021 and ’743 Patents overlap substantially, and the pаrties do not dispute that the claim term in question is used consistently in both patents.
In 2002, Jang entered into an agreement (“Assign- ment Agreement”) with Scimed Life Systems, Inc. (“Sci- med”), a wholly-owned subsidiary of Boston Scientific Corporation, in which Jang assigned the ’021 and ’743 Patents to Scimed in exchange for an initial $50 million up-front payment. The Assignment Agreement also included а promise to pay up to $110 million contingent in part on Scimed’s sales of products incorporating Jang’s patented technology (defined in the Assignment Agree- ment as “Contingent Payment Products”). Scimed paid Jang the $50 million up-front payment and an additional $10 million contingent payment, [1] but refused to pay to Jang the remaining contingent paymеnts specified in the Assignment Agreement.
In May 2005, Jang filed a complaint (amended March 7, 2006) against Boston Scientific and Scimed (collec- tively, “BSC”) claiming, in relevant part, breach of con- tract, rescission, and breach of fiduciary duty. Jang’s claims stemmed from BSC’s refusal to pay the remaining contingent payments under the Assignment Agreement. According to Jang, Scimed’s “Express” and “Liberté” stent products infringed Jang’s ’021 and ’743 Patents, and were thus Contingent Payment Products under the Assignment Agreement. [2] In March 2006, BSC filed an answer and counterclaims, denying any obligation to make additional contingent payments to Jang on the ground that that the accused stents did not infringe Jang’s ’021 and ’743 Pat- ents, and thus were not Contingent Payment Products under the Assignment Agreement.
At the district court, and now on appeal, the parties frame the dispute in relation to Scimed’s Express stent product only, which the parties say is representative of both accused products. The accused Express stent is depicted in the at 16 (“Fig.2” in this opinion):
Fig.2 The middle (boxed) section of Scimed’s Express stent is rеferred to by BSC as a “micro element,” and includes the straight segments that extend out to what BSC refers to as the relatively larger “macro elements,” depicted on either side of the “micro element.” See Fig.2, supra . Both the micro and macro elements are referred to by BSC in their briefs as “expansion elements.” Jang asserts that the “micro element” of the Express stent is the “connect- ing strut column” claimed in his ’021 and ’743 Patents.
As shown in Fig.1, supra , the “connecting struts” of the “connecting strut columns” depicted in Jang’s ’021 and ’743 Patents are unattached from one another, connecting only to the expansion elements at proximal and distal ends. In contrast, as shown in Fig.2, supra , under Jang’s interpretation, each “connecting strut” in the Express stеnt (i.e., two “straight segments” and the associated serpentine structure) is attached to the adjacent connect- ing strut (as well as to the “macro element” of the adja- cent expansion column). Jang argues that the difference is of no consequence to infringement because the term “connecting strut column” in the asserted claims does not contain an “unattached” limitation. Jang thus contends that the “micro element” of Scimed’s Express stent meets the “connecting strut column” limitation in his ’021 and ’743 Patents. BSC counters that the “micro element” is not a “connecting strut column,” but rather a type of “expansion element.” Even assuming that the “micro element” is a type of “connecting strut column” (as did the district court for the purposes of granting the Order , see ¶ 19), BSC argues that the Express stent does not infringe because the term “connecting strut column” must be construed to require unattached connecting struts, and the Express stent “micro elements” are attached.
In May 2006, the district court held a Markman hear- ing, and on August 25, 2006, issued the Markman Order construing, in pertinent part, the term “connecting strut column,” to require that the connecting struts forming the column be “unattached” from one another. Markman 9-11. Based on the Markman Order , the district court determined that Scimed’s stents did not infringe Jang’s ’021 and ’743 Patents, and accordingly entered: (1) partial summary judgment against Jang on the breach of contract claim; and (2) a consent judgment, inter alia , resolving Jang’s claims for rescission and breach of fiduci- ary duty in favor of BSC. Jang appealed, and the Federal Circuit (in an earlier decision in this case) vacated the partial summary judgment and consent judgment and remanded on the ground that the district court failed to specify “how the claim constructions would render the accused products infringing or noninfringing.” Jang v. Boston Scientific Corp. , 532 F.3d 1330, 1331, 1334-35 (Fed. Cir. 2008) (“ Jang I ”) (“A judgment is reviewаble only if it is possible for the appellate court to ascertain the basis for the judgment challenged on appeal.”). On Au- gust 25, 2011, and August 30, 2011, the district court entered the stipulated revised Consent Judgment and Order , respectively. As directed by this court in Jang I , the district court attempted to explain the pertinent claim construction, and why that claim construction would render the accused Express stents nоn-infringing:
The parties agree that, to the extent that the micro elements and straight segments [in Fig.2] boxed . . . above are considered a “ connecting strut col- umn ” (as Dr. Jang claims), the alleged “connecting struts” . . . comprising each alleged “connecting strut column” (i.e., the interconnected segments comprising the “micro elements” and linear seg- ments in the Express stents) are attached to each other. Thus, because the District Court’s Claim Construction Order requires “connecting struts” to be “unattached to each other,” Dr. Jang therefore cannot prove that the Express stents infringe any asserted claim of the ’021 and ’743 patents. Be- cause Dr. Jang cannot show that BSC’s stents practice the “connecting strut column” limitation contained in each of the asserted claims, as thаt limitation has been construed by the Court, he therefore cannot prove that Scimed breached the Assignment Agreement with respect to the ’021 and ’743 patents.
Order ¶ 19 (emphases added). The district court never decided whether the “micro elements” were or were not “connecting strut columns,” but simply accepted Dr. Jang’s assertion as tо this fact for the purpose of the parties’ non-infringement stipulation.
The district court preserved Jang’s right to appeal both orders and the claim construction. Consent Judg- ment ¶¶ 3-4; ¶ 21. Jang appeals the Markman with respect to the construction of the term “con- necting strut column,” and the August 25, 2011, and August 30, 2011, revised, stipulated Consent Judgment and , respectively. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II. D ISCUSSION
A. Standard of Rеview Claim construction is a question of law that this court reviews de novo. Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc).
B. Waiver BSC argues that Jang is asserting a different claim construction on appeal than before the trial court. Based on the allegedly “new” claim construction, BSC contends that Jang’s claim construction argument is waived. Jang responds that he “does not ask this [c]оurt to adopt a full construction for the term ‘connecting strut column,’ but rather to rule on the narrow issue of whether the connect- ing struts forming a column must be ‘ unattached ’ to each other .” Appellant’s Reply Br. 13 (emphasis added).
BSC is incorrect. The appeal raises the narrow ques- tion of whether the connecting struts in the “connecting strut columns” must be unattached. Jang argued below that the claims did not require the “unаttached” limita- tion, and the district court addressed the argument. See Markman Order 9-10; ¶ 16. Jang preserved the issue for appeal; indeed, it is the only issue that he ap- peals. We now turn to the merits.
C. Claim Construction The district court adopted BSC’s proposed construc- tion of “connecting strut column”: “A column formed solely of a plurality of connecting struts unattached to each other and arranged along the circumference of the strut.” Markman Order 9 (emphasis added).
1. Parties’ Arguments Jang disputes only the “unattached” limitation in the distriсt court’s construction of the term “connecting strut column.” Jang argues that no language in the claims, specifications, or file histories of the ’021 or ’743 Patents suggests that the connecting struts cannot be attached. According to Jang, the district court improperly imported the “unattached” limitation from the patent figures. Jang also argues that there was no common understanding in the art at the time that “connecting strut columns” were comprised of unattached struts. To support his argument that attached “connecting strut columns” were known in the art, Jang points the court primarily to U.S. Patent No. 5,593,442 (“Klein”), which he alleges discloses attached “connecting strut columns.” Figure 4A of Klein, as altered in Appellee’s Br. at 30, (“Fig.3” infra ) shоws Klein’s “ar- ticulation structure” 49 (the alleged “connecting strut column”), with “beam members” 50 and 52 (the alleged “connecting struts”) that are attached in a sinusoidal fashion:
Fig.3
BSC counters that “the court’s focus [must] remain[]
on understanding
how a person of ordinary skill in the art
would understand the claim terms
.” Appellee’s Br. 25
(quoting
Phillips v. AWH Corp.
,
BSC also asserts that the ’021 and ’743 Patents’ speci-
fications do not present “merely a series of ‘illustrative
drawings,’ as Appellant suggests; rather . . . the
totality
of
the Jang patents’ disclosure” suggests that
the invention
requires unattached connecting struts. Appellant’s Br.
35. BSC relies on
ICU Medical, Inc. v. Alaris Medical
Systems
,
2. Analysis First, the court notes that it does not address BSC’s argument that the “miсro elements” in the accused Ex- press stent product are not “connecting strut columns” because the stipulated summary judgment of non- infringement is premised exclusively on the adoption of Jang’s argument “that the micro elements . . . are consid- ered a ‘connecting strut column.’” ¶ 19. On re- mand, the district court is free to consider this argument in the first instance.
Turning to the claim construction of the term “con-
necting strut column,” Jang is correct that the district
court impermissibly imported the “unattached” limitation
into the claims based on the examples in the specification.
While the examples in the ’021 and ’743 Patents’ specifi-
cations do show only connecting strut columns with
unattached connecting struts, the specifications do not
require
the connecting struts to be unattached. “[W]e
have repeatedly held that the fact that the specification
describes only a single embodiment, standing alone, is
insufficient to limit otherwise broad claim language.”
Howmedica Osteonics Corp. v. Wright Med. Tech., Inc.
,
This case is not like
ICU Medical
. In that case: (1)
every description in the asserted patent required the
“spike” to be a pointed structure сapable of piercing; (2)
requiring the “spike” to be pointed was necessary in order
for it to perform the function of piercing the seal; and (3)
the ordinary meaning of “spike” to one of skill in the art
was a pointed structure for piercing.
ICU Medical
, 558
F.3d at 1374-75. The court thus interpreted the claims to
include a positive limitation requiring performanсe of that
function. In contrast, here: (1) neither the ’021 or ’743
Patents’ claims nor their specifications say anything
about “unattached” connecting struts; (2) nothing in the
functionality of the connecting strut column requires the
struts to be unattached to one another; and (3) there is no
probative evidence as to any ordinary meaning in the art,
see infra
. The only described function of the connecting
strut column is to “couple[] the first expansion column to
the second expansion column.” ’021 Patent col. 4 ll. 2-3,
col. 18 ll. 33-34. The connecting strut column can perform
this function whether the connecting struts are attached
to one another or not. Yet BSC nevertheless asks the
court to infer a negative limitаtion into the disputed claim
term simply based on the absence of any disclosure of
attached connecting struts.
ICU Medical
does not support
such a negative inference, but rather relies on
Phillips
,
which directly rejects the idea of limiting otherwise broad
claim language based on a single disclosed embodiment.
ICU Medical
,
The prior art that the parties point us to is simply in- sufficient to discern the understanding of one of ordinary skill in the art at the time of the invention. To the extent that the parties argue about whether, in Klein, the “beam members” of the “articulation structure” are attached to one another, the best that can be said is that the reference is ambiguous. Absent any more probative evidence from BSC as to the understanding of one of skill in the art at the time of the invention, we decline to read a limitation into the term “connecting strut column” that is nоwhere present in Jang’s ’021 and ’743 Patents’ claims or specifi- cations . See, e.g. , Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language.”).
III. C ONCLUSION For the foregoing reasons, we reverse the district court’s claim construction of the term “connecting strut column,” insofar as it includes an unattached limitation, vacate the district court’s and Consent Judgment based thereon, and remand for further proceedings consis- tent with this opinion.
REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED
Notes
[1] Pursuant to the Assignment Agreement, Scimed paid Jang the $10 million for failing to obtain a European CE Mark on a Contingent Payment Product within two years of entering into the Assignment Agreement. This payment was credited toward the full $110 million con- tingent fee.
[2] Jang brought two additional claims related to Sci- med’s assignment obligations that settled, and are not at issue on appeal.