Niazi Licensing Corp. v. Boston Scientific Corp.

          ORDER

          Wilhelmina M. Wright United States District Judge

         Plaintiff Niazi Licensing Corporation (Niazi) commenced these patent-infringement actions against Defendants Boston Scientific Corp. (Boston Scientific) and St. Jude Medical S.C., Inc. (St. Jude), alleging that Defendants have infringed claims in United States Patent No. 6, 638, 268 (the '268 Patent), titled “Catheter to Cannulate the Coronary Sinus.” Pending before the Court are St. Jude's motion to strike Niazi's infringement contentions, Boston Scientific's motion to exclude evidence, and the parties' requests for the construction of disputed claim terms in the '268 Patent. (Case No. 17-cv-5094, Dkts. 56, 83; Case No. 17-cv-5096, Dkts. 67, 78.) For the reasons addressed below, the Court denies the motion to strike and the motion to exclude evidence and resolves the claim construction disputes as described herein.

         BACKGROUND

         Niazi, a Washington corporation with its principal place of business in Wisconsin, owns the '268 Patent at issue here. Both Boston Scientific and St. Jude manufacture and sell medical devices. Boston Scientific is a Delaware corporation with its principal place of business in Massachusetts. St. Jude is a Minnesota corporation with its principal place of business in Texas.

         The '268 Patent, issued on October 28, 2003, pertains to a catheter system that can be inserted into the coronary sinus of the heart. This catheter system allows medical professionals to administer fluids and introduce pacing leads to the coronary sinus. Although the use of catheters in general was well established by 2003, the '268 Patent describes an invention that, based on its structure and shape, purportedly is better suited for “use in the coronary sinus, especially in patients suffering from congestive heart failure.” As relevant here, the '268 Patent claims a double catheter system with an “outer, resilient catheter having shape memory and a hook shaped distal end” and an “inner, pliable catheter slidably disposed in the outer catheter.” The '268 Patent also claims methods of using the catheter system.

         Niazi initiated these patent-infringement lawsuits against Boston Scientific and St. Jude on November 13, 2017. Niazi alleges that both Boston Scientific and St. Jude have infringed-either literally or through the doctrine of equivalents-the '268 Patent. Niazi alleges that Boston Scientific and St. Jude have directly infringed the '268 Patent by using, manufacturing, selling, or offering to sell infringing catheter systems. Niazi also alleges that both Defendants have indirectly infringed the '268 Patent by inducing its customers-namely, medical professionals-to infringe the '268 Patent.

         The '268 Patent includes 27 claims, some of which are directed to configurations of the catheters and others that are directed to the method of using the catheter system. Niazi alleges that Boston Scientific infringes 11 claims in the '268 Patent: independent Claims 1, 11, 13, 18, and 24 and dependent Claims 10, 14, 19, 23, 25, and 26. Niazi also alleges that St. Jude infringes those same claims, as well as dependent Claims 15 and 27.

         ANALYSIS

         Before the Court are St. Jude's motion to strike Niazi's infringement contentions, Boston Scientific's motion to exclude evidence, and the parties' requests for claim construction. The Court addresses each, in turn.

         I. St. Jude's Motion to Strike

         Pursuant to Local Rule 26.1 and the February 22, 2019 Scheduling Order, (Case No. 17-cv-5096, Dkt. 65), Niazi submitted infringement contentions in advance of the claim-construction hearing. St. Jude moves to strike these infringement contentions, arguing that Niazi fails to identify an act of direct or indirect infringement.^[1]

         A motion to strike generally is brought under Rule 12(f), Fed. R. Civ. P., which provides that a “court may strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” Here, St. Jude is not moving to strike pleadings, but rather infringement contentions. In support of its motion, St. Jude relies on Federal Rules of Civil Procedure 16(f) and 41. When a party “fails to obey a scheduling or other pretrial order, ” a district court may issue sanctions. Fed.R.Civ.P. 16(f); accord O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1363 (Fed. Cir. 2006) (holding that a federal district court “may impose any just sanction for the failure to obey a scheduling order” (internal quotation marks omitted)). Similarly, when a plaintiff fails to comply with the Federal Rules of Civil Procedure or a court order, “a defendant may move to dismiss the action or any claim against it.” Fed.R.Civ.P. 41(b).

         St. Jude contends that Niazi's infringement contentions violate the February 22, 2019 Scheduling Order. St. Jude does not argue that Niazi's infringement contentions are untimely, but instead argues that the infringement contentions are substantively deficient. Nothing in Rule 16(f), Rule 41(b), or any case to which St. Jude cites contemplates that such a deficiency is a violation of a scheduling order. Moreover, the authority on which St. Jude relies provides, at most, that a district court has the discretion to impose sanctions if it determines that the infringement contentions violate a court order. Under the circumstances presented here, the Court declines to strike Niazi's allegedly deficient infringement contentions.

         Accordingly, St. Jude's motion to strike is denied.

         II. Claim Construction

         Niazi alleges that St. Jude and Boston Scientific have infringed the '268 Patent. The parties request construction of 21 terms or phrases that are found within the claims at issue.

         A patent is infringed by “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States . . . during the term of the patent.” 35 U.S.C. § 271(a). Courts employ a two-step analysis when making an infringement determination. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). First, the court must construe the asserted claims of the patent to ascertain their meaning and scope. See Id. Second, the fact finder must compare the construed claims with the accused product. See Id. at 976. Only the first step of this analysis-claim construction-presently is at issue.

         A district court's duty when performing claim construction is “to resolve a dispute about claim scope that has been raised by the parties.” Eon Corp. IP Holdings v. Silver Spring Networks, Inc., 815 F.3d 1314, 1319 (Fed. Cir. 2016). This duty resides with the court because “the ultimate question of construction [is] a legal question.” Id. at 1318 (alternation in original) (quoting Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 842 (2015)).

         It also is appropriate at this stage for a district court to determine whether a disputed claim complies with the definiteness requirement of Title 35, United States Code, Section 112(b). See Noah Sys., 675 F.3d at 1311 (holding that a determination of indefiniteness is “a matter of claim construction”). Section 112(b) provides that patent claims must “particularly point[ ] out and distinctly claim[ ] the subject matter which the inventor . . . regards as the invention.” 35 U.S.C. § 112(b). A party asserting that a claim is indefinite must show by clear and convincing evidence that the claim is indefinite. BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). An indefiniteness ruling renders a claim invalid as a matter of law. See, e.g., Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 906 (2014); Maurice Mitchell Innovations, L.P. v. Intel Corp., 249 Fed.Appx. 184, 186 (Fed. Cir. 2007).

         When engaging in claim construction, a district court must construe the claims “independent of the accused product, in light of the specification, the prosecution history, and the prior art.” Embrex, Inc. v. Serv. Eng'g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000) (per curiam) (internal quotation marks omitted). Although it is appropriate for a court to consider the accused device when determining which aspects of the patent claim should be construed, the claim itself “is construed in the light of the claim language . . . not in light of the accused device.” Exigent Tech., Inc. v. Atrana Sols., Inc., 442 F.3d 1301, 1309 n.10 (Fed. Cir. 2006) (internal quotation marks omitted). Claim construction merely elaborates the normally terse claim language “in order to understand and explain, but not to change, the scope of the claims.” Embrex, 216 F.3d at 1347 (internal quotation marks omitted).

         A district court's claim-construction analysis begins by focusing on the words of the claims. “It is a bedrock principle of patent law that the claims of the patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted). A construction that gives meaning to all claim terms is preferred. Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). Because claim terms often are used “consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims.” Phillips, 415 F.3d at 1314. And the doctrine of claim differentiation creates a presumption that the use of different terms in a patent claim connotes that those terms should be ascribed different meanings. See Chi. Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012).

         Courts generally give the words in a patent claim their ordinary and customary meaning at the time of the invention. Phillips, 415 F.3d at 1313. The ordinary and customary meaning of a claim term is the meaning that would have been understood by a person of ordinary skill in the field of technology in question. Id. As the Federal Circuit has explained:

It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed. Such person is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field. The inventor's words that are used to describe the invention-the inventor's lexicography-must be understood and interpreted by the court as they would be understood and interpreted by a person in that field of technology. Thus the court starts the ...