United States District Court, D. Minnesota
Wilhelmina M. Wright United States District Judge
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.
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
'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
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.
'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.
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.
St. Jude's Motion to Strike
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.
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.”
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
St. Jude's motion to strike is denied.
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.
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.
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)).
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).
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).
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).
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 ...