Niazi’s Patent Survives on Appeal: Federal Circuit Reverses In Part Lower Court’s Decision
On April 11, 2022, Niazi Licensing Corporation (“Niazi”) succeeded in part in its appeal at the Federal Circuit in Niazi Licensing Corporation v. St. Jude Medical S.C. Inc. Niazi’s lawsuit alleged that St. Jude Medical S.C. Inc.’s (“St. Jude”) CPS telescoping catheter system infringed U.S. Patent No. 6,638,268, entitled “Catheter to Cannulate the Coronary Sinus” (the “‘268 patent”).
The district court determined that the terms “resilient” and “pliable” in the claims rendered all but one claim of the ‘268 patent indefinite and, therefore, invalid. However, the Federal Circuit reversed the district court’s holding and instead found that, although the terms may be broad, they are not uncertain. The Federal Circuit held that intrinsic record and extrinsic evidence are sufficient to inform a skilled artisan of the meanings of the terms with reasonable certainty. The court sent the case back to the district court to resolve any outstanding questions of whether St. Jude infringed the claims and whether St. Jude’s remaining invalidity defenses are applicable.
The Federal Circuit’s complete decision is available here.
Federal Circuit Reverses District Court’s Decision Based on On-Sale Bar (Junker v. Medical Components, Inc.)
On February 10, 2022, in Junker v. Medical Components, Inc., the U.S. Court of Appeals for the Federal Circuit reversed the Eastern District of Pennsylvania’s grant of summary judgment of no invalidity under the “on-sale bar” of 35 U.S.C. § 102(b) (pre-AIA). Mr. Junker’s lawsuit alleged that Medical Components, Inc. and Martech Medical Products, Inc. (collectively, “MedComp”) infringed the claimed design of U.S. Design Patent No. D450,839 (the “D’839 patent”), entitled “Handle for Introducer Sheath.”
Under 35 U.S.C. § 102(b) (pre-AIA), a patent claim is invalid if “the invention was . . . on sale in this country, more than one year prior to the date of the application for patent in the United States.” Section 102(b)’s on-sale bar is triggered if, more than one year before the United States patent application filing date (i.e., before the “critical date”), the claimed invention was both (1) the subject of a commercial offer for sale and (2) ready for patenting. Mr. Junker filed the application that led to the D’839 patent on February 7, 2000; as such, the critical date for analyzing the applicability of the on-sale bar is February 7, 1999. The parties did not dispute that the claimed design was ready for patenting, but disagreed whether a January 8, 1999 letter was a commercial offer for sale of the claimed design or merely a quotation of the parties’ preliminary negotiations.
Applying traditional contract law principles, the Federal Circuit held that the January 8, 1999 letter was a commercial offer for sale. First, the Federal Circuit noted that the letter was directly responding to a “request for quotation.” In addition, the letter also contained a number of necessary terms typical for a commercial contract such as “shipment in bulk, non-sterile,” “FOB Athens, Texas,” and a “net 30-day basis” payment term. The Court further highlighted that the letter specified multiple different purchase options for the patented products. Accordingly, the Court determined based on the “overall language of the letter” that the specificity and completeness of the commercial terms therein outweighed three references to “quotation” and mention of possible future discussions. The Federal Circuit thus found that the letter triggered the on-sale bar and invalidated the D’839 patent, and therefore reversed the district court’s summary judgment of no invalidity.
The Federal Circuit’s decision is available here.
Respironics Files for Inter Partes Review of ZOLL Medical’s Patient Monitoring Patent
Respironics, Inc., a subsidiary of Koninklijke Philips N.V., filed a petition last Friday with the Patent Trial and Appeal Board requesting inter partes review of ZOLL Medical Corporation’s U.S. Patent No. 6,681,003 to Linder et. al. The petition identifies Koninklijke Philips as a real party-in-interest.
The ‘003 patent is entitled “Data Collection and System Management for Patient-Word Medical Devices.” The ‘003 patent relates to “a method and system of monitoring information received from a patient-word medical device.”
The petition seeks review of nine of the patent’s 35 issued claims. Eight of these nine claims identified in the petition have been asserted by ZOLL Medical against Respironics in a lawsuit filed in the U.S. District Court of Delaware. The amended complaint, filed on January 9, 2013, alleges that Respironics’s “patient medical monitoring and treatment systems and methods” including positive airway pressure devices, infringe the ‘003 patent.
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