Latest Federal Court Cases, 4/18/22
Niazi Licensing Corporation v. St. Jude Medical SC, Inc., Appeal No. 2021-1864 (Fed. Cir. Apr. 11, 2022)
The Federal Circuit’s only precedential patent decision this week comes on appeal from a district court decision finding invalidity, granting summary judgment of no induced infringement, and imposing sanctions pursuant to Fed. R. Civ. P. 37. The Federal Circuit affirmed in part, reversed in part, and remanded, addressing several discrete issues relating to validity and infringement, evidentiary challenges, and sanctions.
The patent at issue (the ’268 patent) related to medical treatments for congestive heart failure and involved method claims pertaining to “a double catheter—for cannulating the coronary sinus without significant manipulation.”
Niazi, the owner of the ’268 patent, sued St. Jude for patent infringement and induced infringement. “On appeal, Niazi challenge[d]: (1) the district court’s determination that [certain claims of the ’268 patent were] invalid as indefinite; (2) the district court’s summary judgment of no induced infringement of claim 11; (3) the district court’s imposition of sanctions against Niazi under Federal Rule of Civil Procedure 37 excluding portions of [Niazi’s technical expert] Dr. Burke’s and [Niazi’s damages expert] Mr. Carlson’s expert reports and awarding monetary sanctions for violating that order; and (4) the district court’s exclusion of Mr. Carlson’s opinion as unreliable under Daubert.”
First, the Court addressed Niazi’s assertion that the district court erred in holding that the terms “resilient” and “pliable” rendered various claims of the ’268 patent invalid as indefinite. Agreeing with Niazi, the Court explained that the “reasonable certainty” requirement of indefiniteness “exists to strike a delicate balance, affording clear notice of what is claimed while recognizing [ ] inherent limitations [of language]. Otherwise there would be a zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims…. The definiteness requirement thus mandates clarity, while recognizing that absolute precision is unattainable.” As to the claims of the ’268 patent, the Court found that the intrinsic record and extrinsic evidence were sufficient to inform a skilled artisan, with reasonable certainty, of the meanings of “resilient” and “pliable.” Thus, the Court reversed the district court as to indefiniteness.
Second, the Court addressed Niazi’s assertion that the district court erred in granting summary judgment of no induced infringement. While the Court disagreed with the district court’s claim construction of several steps of the method claim, it agreed with the district court’s construction on the remaining steps at issue as well as the district court’s finding that Niazi failed to meet its burden to prove direct infringement. Accordingly, the Court affirmed the district court’s summary judgement of no induced infringement on that basis and did not address Niazi’s arguments on specific intent.
Third, the Court addressed Niazi’s challenge to the district court’s order excluding portions of Dr. Burke’s and Mr. Carlson’s expert reports. As regarding Dr. Burge, “[o]n appeal, Niazi argue[d] that the district court abused its discretion in its application of the four-factor test for exclusion of previously undisclosed evidence set forth in Citizens Bank of Batesville, Arkansas v. Ford Motor Co., 16 F.3d 965, 966-67 (8th Cir. 1994).” However, the Court found that the district court “did not rest its analysis on these four factors[ but, rather,] considered whether Niazi’s failure to disclose these facts or identify Dr. Burke as a fact witness was ‘substantially justified or harmless’ under Rule 37(c)(1).” As regarding Mr. Carlson, the Court similarly found no abuse of discretion as substantial evidence existed to support the district court’s decision to exclude “Mr. Carlson’s conclusory and legally insufficient analysis.” Accordingly, the Court affirmed the district court’s exclusion order as to both Dr. Burke and Mr. Carlson.
Finally, the Court addressed Niazi’s challenge to the district court’s award of sanctions against Niazi for violating its exclusion order as to Dr. Burke. The Court affirmed, explaining that “the sanctions the court imposed were specifically keyed to St. Jude’s expenses in moving to strike the already-excluded evidence from consideration at summary judgment. [Therefore, there was] no abuse of discretion in the district court’s decision to award monetary sanctions.”
The Court affirmed in part, reversed in part, and remanded.
The opinion can be found here.
By Annie White