G. DAVID JANG, M.D., Plaintiff-Appellant
BOSTON SCIENTIFIC CORPORATION, SCIMED LIFE SYSTEMS, INC., NKA BOSTON SCIENTIFIC SCIMED, INC., Defendants-Cross-Appellants
from the United States District Court for the Central
District of California in No. 5:05-cv-00426-VAP-MRW, Judge
Virginia Anne Phillips.
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.
Prost, Chief Judge, O'Malley and Chen, Circuit Judges.
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
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
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.
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
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).
BSC's Express Stent
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"
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, Jang's patented technology.
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 ...