A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., No. 2021-1864 (Fed. Cir. (D. Minn.) Apr. 11, 2022). Opinion by Stoll, joined by Taranto and Bryson.
Niazi sued St. Jude for directly and indirectly infringing a patent directed to a double catheter for use during resynchronization therapy for treating congestive heart failure.
During claim construction, the district court determined that the terms “resilient” and “pliable” in certain claims rendered those claims invalid as indefinite. The district court also construed an asserted method claim to require the method steps to be “performed in the order listed” in the claim. Based on that construction, the court found no induced infringement of the method claim because there was no direct infringement and no specific intent to induce infringement.
After claim construction, the parties exchanged expert reports. St. Jude moved to strike portions of Niazi’s technical expert report and damages expert report for improperly relying on facts not disclosed during fact discovery. The district court agreed and, as a sanction, excluded portions of both reports and precluded the technical expert from testifying as to factual issues. The court also excluded portions of Niazi’s damages expert report as unreliable because the expert failed to apportion damages to the value attributable to the claimed method.
Niazi appealed each of those rulings. The Federal Circuit affirmed-in-part, reversed-in-part, and remanded.
First, the Federal Circuit reversed the district court’s determination that the terms “resilient” and “pliable” rendered certain claims invalid as indefinite. The Federal Circuit ruled that “the terms are broad, but they are not uncertain,” and “the district court erred in holding otherwise.” Both the claim language and the written description provided guidance on what the terms mean. The court ruled that “the intrinsic record provides objective boundaries by which a skilled artisan could determine the scope of the claims.”
Next, the Federal Circuit affirmed the district court’s summary judgment of no induced infringement. The key evidence Niazi relied on for direct infringement—St. Jude’s instructions for use for the accused catheter—recites the steps required by the claim “in an order opposite to that required by [the] claim.” The court ruled that “no reasonable juror could find otherwise.” Thus, because Niazi could not prove direct infringement—a necessary element of its inducement claim—the Federal Circuit affirmed the district court’s summary judgment of no induced infringement.
Lastly, addressing the district court’s exclusion of portions of Niazi’s technical expert report and damages expert report, the Federal Circuit ruled that Niazi identified no abuse of discretion. Also, the district court properly excluded portions of Niazi’s damages expert report as unreliable because “the damages opinion was conclusory and legally insufficient.”
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