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Consent judgment with no explanation of how claim construction affected noninfringement vacated
July 17, 2008
In a decision Tuesday, the Federal Circuit vacated a consent judgment entered by a district court and remanded the case for clarification. The district court entered a consent judgment, stipulated by the parties, stating the defendants' products did not infringe under the district court's claim construction of several terms, but that the plaintiff could still appeal the claim construction.The Federal Circuit vacated the decision and remanded the case because the judgment lacked vital information as to whether there existed a controversy upon which the court could rule. It was not apparent from the judgment which (if any) of the claim terms at issue affected the stipulation of noninfringement. Further, on appeal, the parties admitted the district court's construction of some of the terms did not have any effect on infringement. This ambiguity, combined with the fact that there was no "context" of how the claims related to the accused devices, rendered the consent judgment effectively unreviewable. As a result, the Federal Circuit remanded for further clarification of which terms were actually at issue with regard to infringement.More regarding Jang v. Boston Sci. Corp. after the jump.Plaintiff G. David Jang, M.D. is the inventor of two patents relating to the design or architecture of intravascular stents. In 2002, Jang assigned the two patents to Boston Scientific and SciMed. The agreement required the payment to Jang of $50 million immediately and an additional amount (up to $110 million) based on the sales of commercial products covered by the patents if such products were produced, or a noncommercialization payment of $10 million if products were not produced. Both companies developed and sold several stent designs which they asserted were not covered by the patents, and paid Jang only the $50 million up-front and $10 million noncommercialization fee.Jang filed suit alleging breach of contract, claiming four models of stents sold by the two companies were covered by at least one of the patents, and thus that Jang was entitled to additional payment under the agreement. The district court held a claim construction hearing, and construed the nine contested claim terms: "expansion column," "connecting strut column," "connecting strut," "expansion strut," "expansion strut pair," "proximal," "distal," and "radius of curvature." After the district court's claim construction order, the parties entered into a stipulation, agreeing that under the district court's construction, Jang could not prove the products were "covered by" the assigned patents. The stipulation did not detail why there could be no infringement. The court entered a consent judgment in light of the stipulation. From this judgment, Jang appealed, challenging only the district court's claim construction with respect to the patents.The Federal Circuit vacated. The Federal Circuit noted that a judgment based on the stipulation of the parties may be reviewable on appeal, in appropriate circumstances. Further, a remand for clarification is appropriate where a judgment is ambiguous. Because the consent judgment suffered from two ambiguities, the court decided it was appropriate to remand the case to the district court for clarification.The first ambiguity dealt with the problem of determining which of the district court's claim construction rulings would affect the issue of infringement. The parties extensively briefed the construction of "expansion column," specifically whether it should require a tubular structure. However, at oral argument, the parties conceded that the construction was not "pertinent to the issue of infringement." Because the parties did not discuss the other terms in the briefs, the court concluded that it was likely that they would not affect infringement either. Without the clarification of this issue, the court stated that it would risk rendering an advisory opinion.The second ambiguity stemmed from the fact that the stipulated judgment provided no factual context for the claim construction issues presented by the parties. Specifically, the judgment did not address how the disputed claim construction rulings relate to the accused products. In Lava Trading, Inc. v. Sonic Trading Management, LLC, the court noted:
Without knowledge of the accused products, this court cannot assess the accuracy of the infringement judgment under review and lacks a proper context for an accurate claim construction…Without the vital contextual knowledge of the accused products or processes, this appeal takes on the attributes of something akin to an advisory opinion on the scope of the [asserted] patent. The problems with such an appeal, even if within this court's jurisdiction, have been noted in many of the court's prior cases.
Because there was no mention of the accused products and how the claim constructions applied to them, the court held an ambiguity existed that needed to be clarified before it could effectively review the judgment.Therefore, the Federal Circuit vacated the consent judgment and remanded the case to clarify the two ambiguities.To read the full decision in Jang v. Boston Sci. Corp., click here.
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