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Jang v. Boston Scientific Corp.

United States Court of Appeals, Federal Circuit

September 29, 2017

G. DAVID JANG, M.D., Plaintiff-Appellant
v.
BOSTON SCIENTIFIC CORPORATION, SCIMED LIFE SYSTEMS, INC., NKA BOSTON SCIENTIFIC SCIMED, INC., Defendants-Cross-Appellants

         Appeals from the United States District Court for the Central District of California in No. 5:05-cv-00426-VAP-MRW, Judge Virginia Anne Phillips.

          Daryl Joseffer, King & Spalding LLP, Washington, DC, argued for plaintiff-appellant. Also represented by Jed I. Bergman, Kasowitz, Benson, Torres & Friedman LLP, New York, NY; Marcus Barber, Darcy L. Jones, Heather Kim, Jonathan K. Waldrop, Redwood Shores, CA; Jeffrey J. Toney, Paul Gunter Williams, Atlanta, GA.

          Matthew Wolf, Arnold & Porter Kaye Scholer LLP, Washington, DC, argued for defendants-cross-appellants. Also represented by Edward Han, John Nilsson.

          Before Prost, Chief Judge, O'Malley and Chen, Circuit Judges.

          Chen, Circuit Judge.

         This dispute between G. David Jang, M.D. (Dr. Jang) and Boston Scientific Corp. and Scimed Life Systems, Inc. (collectively, BSC), more than a decade old, returns to us for a fourth time. In the latest appeal of this case involving U.S. Patent No. 5, 922, 021 (ʼ021 Patent) and BSC's sales of several coronary stents (collectively, Express stent), Dr. Jang challenges the district court's denial of his motion for judgment as a matter of law (JMOL) on the ground that no reasonable jury could have found that BSC's Express stent did not literally infringe claims 1 and 8 (the asserted claims) of the '021 Patent. Dr. Jang also challenges the district court's vacatur of the jury's finding that the Express stent infringed the asserted claims under the doctrine of equivalents, as well as the entry of judgment of non-infringement in favor of BSC, on the ground that the district court incorrectly held that he failed to provide an acceptable hypothetical claim for an ensnarement analysis, and thereby failed to prove that his doctrine of equivalents theory did not ensnare the prior art. Dr. Jang's appeal is accompanied by a purported cross-appeal from BSC, which assigns error to the district court's holding that BSC was contractually obligated to pay royalties for past sales of the Express stent if it infringed the asserted claims, notwithstanding the U.S. Patent and Trademark Office's (PTO) eventual cancellation of them in an ex parte reexamination.

         Because we affirm the district court's denial of Dr. Jang's motion for JMOL, its vacatur of the jury verdict of infringement under the doctrine of equivalents, and its entry of judgment of non-infringement, we dismiss BSC's cross-appeal and need not reach the arguments it raised.

         Introduction

         A. The'021 Patent

         Dr. Jang is the named inventor of the '021 Patent, which is generally directed to a coronary stent. A representative embodiment of the claimed stent is below.

         (Image Omitted)

         '021 Patent fig. 9D (annotated). Inside the dotted boxes are expansion columns made up of a plurality of pairs of expansion struts. The solid box outlines a connecting strut column made up of connecting struts. Each connecting strut has: (i) a section at the "proximal" end that connects to an expansion strut pair in one expansion column; (ii) a section at the "distal" end that connects to an expansion strut pair in another expansion column; and (iii) an intermediate section that is not parallel to the two end sections. See, e.g., id. col. 13 ll. 5-18, 38-48. Given the connecting strut's proximal and distal connections, each connecting strut links expansion strut pairs from two expansion columns in a "peak-to-peak" configuration. The connecting struts are designed to increase the longitudinal flexibility of the stent. See id. col. 6 ll. 29-36; id. col. 8 ll. 45-47.

         Independent claim 1 is representative of the asserted claims:

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 of the first expansion strut pair that couples the first and second expansion struts at a distal 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 including a first expansion strut positioned adjacent to a second expansion strut and a joining strut of the second expansion strut pair that couples the first and second expansion struts of the second expansion strut pair at a proximal end of the second expansion strut pair, a plurality of the second expansion strut pair forming a second expansion column;
a first connecting strut including a first connecting strut proximal section, a first connecting strut distal section and a first connecting strut intermediate section, the first connecting strut proximal section being coupled to the distal end of the first expansion strut pair in the first expansion column and the first connecting strut distal section being coupled to the proximal end of the second expansion strut pair of the second expansion 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 intermediate section being nonparallel to the first connecting strut proximal and distal sections, wherein the first expansion strut of the first expansion strut pair in the first expansion column has a longitudinal axis offset from a longitudinal axis of the first expansion strut of the second expansion strut pair in the second expansion column.

Id. col. 18 ll. 9-40 (emphases added).[1]

         B. BSC's Express Stent

         The Express stent comprises two types of alternating columns or "elements"-referred to as "macroelements" and "microelements"-that are joined together. Microelements, depicted inside the box in the schematic below, are smaller and narrower than the macroelements on either side of the microelements. The microelements include horizontal bars that join the microelements and the macroelements together in a "peak-to-valley" configuration.

         (Image Omitted)

         C. Litigation History

         In 2002, Dr. Jang executed an agreement assigning the '021 Patent (and another related patent) to BSC, and in return, BSC agreed to pay Dr. Jang about $50 million. Pursuant to the agreement, under certain conditions, Dr. Jang was entitled to certain royalty payments (up to about $110 million), if BSC ever developed and sold a coronary stent that was covered by, i.e., would infringe, [2]Jang's patented technology.

         In May 2005, Dr. Jang commenced this case against BSC, asserting that BSC's Express stent was one such stent and consequently BSC owed royalties associated with the sales of the Express stent that BSC had already made. Many years after Dr. Jang filed suit, in October ...


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