Niazi Licensing Corporation v. St. Jude Medical S.C., Inc.

Background

Niazi Licensing Corporation (NLC) owns U.S. Patent No. 6,638,268, which concerns a double-catheter system used to place an electrical lead in a branch of the coronary sinus. NLC alleged that St. Jude indirectly infringed Claim 11 by inducing medical professionals to perform the patented method through St. Jude’s product instructions and marketing materials. Claim 11 requires five steps performed in the listed order. The court had previously construed “the catheter” to mean the double catheter and held that the claim is infringed only when its steps are performed in the listed order.

The parties filed cross-motions for summary judgment. NLC sought judgment on infringement, St. Jude’s invalidity defenses, and St. Jude’s challenge to damages accruing before the inventor assigned the patent to NLC. St. Jude sought summary judgment on infringement and alternatively argued that NLC could not recover damages from before the assignment.

Infringement Analysis

For induced patent infringement, NLC had to establish both direct infringement by at least one person and that St. Jude knowingly induced the infringement with the specific intent to encourage it. The court concluded that NLC had not shown direct infringement. St. Jude did not itself perform the medical procedure, so NLC needed evidence that St. Jude induced a single customer to perform every step of Claim 11 in the required order.

The court rejected NLC’s reliance on a statement in a St. Jude damages expert’s report that physicians used the Claim 11 method less than one percent of the time. The court found the statement inadmissible hearsay within hearsay and also viewed it as hypothetical and speculative. The statement did not identify a specific instance of infringement or connect any possible use of the method to a St. Jude customer using St. Jude’s instructions.

The court also found that St. Jude’s written instructions did not establish infringement. For the first step, the instructions indicated that the outer catheter should be inserted before the inner catheter, rather than directing simultaneous insertion of the double catheter. For the second step, the instructions did not follow the claim’s order and described guidewire use as optional. For the third step, the instructions did not direct advancing the inner catheter out of the outer catheter along a guidewire into the branch vein. For the fourth step, the instructions did describe inserting a lead through the inner and outer catheters into the branch vein. For the fifth step, however, the instructions described removing only the inner catheter, not withdrawing both catheters simultaneously.

Because the instructions did not describe all five steps together, did not state them in the required order, and characterized some steps as optional, the court held that NLC’s evidence required too speculative an inference that a customer actually performed the patented method. The court separately concluded that the same evidence did not show that St. Jude knowingly encouraged infringement or possessed the required specific intent. Merely describing a possible use, or knowing that infringement might occur, was not enough.

Disposition

Judge Wilhelmina M. Wright denied NLC’s motion for summary judgment and granted St. Jude’s motion for summary judgment. The order therefore resolved the infringement issue in St. Jude’s favor. Because the court granted summary judgment of non-infringement, it declined to address NLC’s alternative arguments concerning St. Jude’s invalidity defenses and the scope of recoverable damages. The court ordered that judgment be entered accordingly.