Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., No. 21-1864 (Apr. 11, 2022), reversing a holding that certain patent claims were indefinite, but affirming rulings of no induced infringement, discovery sanctions excluding technical and damages experts based on their reliance on undisclosed facts, and the exclusion of Niazi’s damages expert’s opinion under Daubert.
Niazi sued St. Jude for infringement of a patent directed to a double catheter and method for using the same for the treatment of heart failure. During claim construction, the terms “resilient” and “pliable” were held indefinite. Summary judgment of no induced infringement of method claim 11 was granted based on St. Jude performing the accused steps of claim 11 in a different order than claimed. Rule 37 sanctions were entered because Niazi’s experts relied on facts not disclosed during discovery. Finally, Niazi’s damages expert’s opinions were excluded because of failure to apportion damages between infringing and non-infringing uses and improperly including leads in the royalty base. Niazi appealed.
The Federal Circuit reversed the indefiniteness ruling, holding that the terms “resilient” and “pliable” were definite because the intrinsic and extrinsic evidence provided “objective boundaries for those of skill in the art” and “inform[ed] a skilled artisan, with reasonable certainty” of their meaning. The Court noted that the dependent claims and the written description provided examples of “resilient” materials that would be understood by a person of ordinary skill in the art. The written description also provided numerous examples of “pliable” materials. Extrinsic evidence of dictionary definitions confirmed that “resilient” and “pliable” would have broad but understood meanings to a skilled artisan.
The Court affirmed the ruling of no induced infringement, holding that no reasonable juror could find direct infringement of method claim 11 because St. Jude’s instructions for use did not describe performing the accused steps in the order claimed. Regarding experts, the Court held it was not an abuse of discretion to 1) exclude them based on their reliance on facts not disclosed in fact discovery; and 2) exclude Niazi’s damages expert’s opinion as unreliable for failure to properly apportion damages between infringing and non-infringing uses and for improperly including leads in the royalty base.