Addressing whether a consent judgment entered by the district court was ambiguous, the U.S. Court of Appeals for the Federal Circuit vacated the ruling of the lower court and remanded the case for clarification. G. David Jang M.D. v. Boston Scientific Corp. and Scimed Life Systems, Inc., Case No. 07-1385 (Fed. Cir., July 15, 2008) (Dyk, J.).
Plaintiff Dr. G. Jang, an inventor of intravascular stents (tube shaped mesh devices used to treat certain forms of cardiac disease), sued defendants Boston Scientific and Scimed Life Systems for patent infringement and breach of contract. Jang alleged that Boston Scientific and Scimed had breached an assignment agreement by failing to make required payments on two stent patents. Jang claimed that models of intravascular stents sold by the defendants were "covered by" the patents assigned to them and therefore Jang was entitled to an additional $100 million payment under the assignment agreement. Both defendants claimed that the various stent designs they sold did not use the patents.
The district court issued a claim construction, construing the contested terms. Based on the claim construction, the parties entered a stipulation agreeing that under the district court's claim construction Jang could not prove that the accused products infringed the asserted patents. The district court signed a proposed consent judgment drafted by the parties that incorporated two prior partial summary judgment rulings into a final judgment and granted declaratory relief that the disputed angioplasty patents were not within the scope of Jang's assignment. Jang appealed the district court's claim construction.
The Federal Circuit examined the lower court's consent judgment and found it suffered from two ambiguities. First, the Court was unable to determine which of the lower court's claim construction rulings would actually affect the issue of infringement, due to the sparse record and lack of any explanation as to which constructions would support a claim of infringement. Article III does not permit the courts to resolve issues when it is not clear that the resolution of the question would resolve a controversy between interested parties. Secondly, the Court determined that the stipulated judgment provided no context with respect to how the disputed claim construction rulings relate to the accused products, leaving the Court without a proper context for accurate claim construction. As a result, the Court remanded the case to the district court for clarification, both to avoid rendering an advisory opinion as to claim construction issues that would not actually affect the infringement controversy between the parties and to receive a better context for claim construction.
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