Jang v. Boston Scientific Corp.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
G. DAVID JANG, M.D.,
Plaintiff-Appellant,
v.
BOSTON SCIENTIFIC CORPORATION,
AND SCIMED LIFE SYSTEMS, INC.,
Defendants-Appellees.
__________________________
2011-1633
__________________________
Appeal from the United States District Court for the
Central District of California in No. 05-CV-0426, Judge
Virginia A. Phillips.
__________________________
Decided: August 22, 2012
__________________________
JEFFREY G. HOMRIG, Kasowitz, Benson, Torres &
Friedman, LLP, of Redwood Shores, California, argued for
plaintiff-appellant. With him on the brief was DOUGLAS
E. LUMISH; and JED I. BERGMAN and PATRICIA YOUNG, of
New York, New York.
2 JANG v. BOSTON SCIENTIFIC
MATTHEW M. WOLF, Arnold & Porter, LLP, of Wash-
ington, DC, argued for defendants-appellees. With him on
the brief were EDWARD HAN and JOHN E. NILSSON.
__________________________
Before LINN, PLAGER, and DYK, Circuit Judges.
LINN, Circuit Judge.
Plaintiff-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 (“Order”),
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 Order based thereon, and remands for
further proceedings consistent with this opinion.
I. BACKGROUND
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.
JANG v. BOSTON SCIENTIFIC 3
Figure 9D of the ’021 Patent, as modified in the Order
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 columns”
(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
expansion 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
4 JANG v. BOSTON SCIENTIFIC
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 including 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 the
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 expansion 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 parties 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
JANG v. BOSTON SCIENTIFIC 5
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 a 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 payments 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.
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.
6 JANG v. BOSTON SCIENTIFIC
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 Order at 16 (“Fig.2” in this opinion):
Fig.2
The middle (boxed) section of Scimed’s Express stent is
referred 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
stent (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-
JANG v. BOSTON SCIENTIFIC 7
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
Order ¶ 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
Order 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 reviewable 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
8 JANG v. BOSTON SCIENTIFIC
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 non-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 that
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 to 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; Order ¶ 21. Jang appeals the Markman
Order with respect to the construction of the term “con-
necting strut column,” and the August 25, 2011, and
JANG v. BOSTON SCIENTIFIC 9
August 30, 2011, revised, stipulated Consent Judgment
and Order, respectively. This court has jurisdiction
pursuant to 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
A. Standard of Review
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]ourt 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 “unattached” limita-
tion, and the district court addressed the argument. See
Markman Order 9-10; Order ¶ 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
10 JANG v. BOSTON SCIENTIFIC
and arranged along the circumference of the strut.”
Markman Order 9 (emphasis added).
1. Parties’ Arguments
Jang disputes only the “unattached” limitation in the
district 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) shows 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
JANG v. BOSTON SCIENTIFIC 11
(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed.
Cir. 2005) (en banc) (emphasis in brief). And, according to
BSC, every prior art reference, including Klein, discloses
only unattached connecting struts, which would govern
the understanding of one of ordinary skill in the art at the
time. In response to Jang’s argument that Klein discloses
an attached “connecting strut column,” BSC argues that
the “articulation structure” 49 (see Fig.3, supra) is not a
“connecting strut column,” but rather, an expansion
element only.
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, 558 F.3d 1368 (Fed. Cir. 2009), where this court
held that the term “spike” in the claim at issue was lim-
ited to a pointed tip for piercing a seal because every
example in the specification depicted a pointed spike;
every figure depicted the spike piercing a seal; piercing
was not optional; and the patentee “offer[ed] no support
from any intrinsic or extrinsic source in support of its
claim that the ordinary meaning of spike would include a
non-pointed structure . . . .” Id. at 1374-75.
2. Analysis
First, the court notes that it does not address BSC’s
argument that the “micro 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.’” Order ¶ 19. On re-
mand, the district court is free to consider this argument
in the first instance.
12 JANG v. BOSTON SCIENTIFIC
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.,
540 F.3d 1337, 1345 (Fed. Cir. 2008) (declining to impute
a limitation into a disputed claim term in the absence of a
clear requirement in the specification, even where “every
disclosure of [the disputed term] in the specification
shows [the alleged limitation]”); see also Ventana Med.
Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1181
(Fed. Cir. 2006) (“[T]he mere fact that the [asserted]
patent discloses [only certain] embodiments . . . does not
in and of itself mean that the method claims at issue are
limited to the disclosed embodiments.”); Phillips, 415 F.3d
at 1323 (“[W]e have expressly rejected the contention that
if a patent describes only a single embodiment, the claims
of the patent must be construed as being limited to that
embodiment.”). Nor do the ’021 and ’743 Patents’ specifi-
cations “clearly indicate the patentee’s intent to give [the
disputed term] a unique meaning . . . .” Laryngeal Mask
Co. v. Ambu A/S, 618 F.3d 1367, 1372 (Fed. Cir. 2010)
(“To be his own lexicographer, a patentee must use a
special definition of the term that is clearly stated in the
patent specification or file history.” (internal quotation
and alteration omitted)).
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 capable of piercing; (2)
requiring the “spike” to be pointed was necessary in order
JANG v. BOSTON SCIENTIFIC 13
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 performance 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 limitation 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, 558 F.3d at 1375; Phillips, 415 F.3d at 1323.
ICU Medical only supports the limiting of a claim term
when warranted based on “‘how a person of ordinary skill
in the art would understand the claim terms[]’ . . . ‘after
reading the entire patent.’” 558 F.3d at 1375 (quoting
Phillips, 415 F.3d at 1321, 1323).
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
14 JANG v. BOSTON SCIENTIFIC
the time of the invention, we decline to read a limitation
into the term “connecting strut column” that is nowhere
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. CONCLUSION
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 Order and Consent Judgment
based thereon, and remand for further proceedings consis-
tent with this opinion.
REVERSED-IN-PART, VACATED-IN-PART, AND
REMANDED