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Jang v. Boston Scientific Corp.

United States Court of Appeals, Federal Circuit

September 16, 2014

G. DAVID JANG, M.D., Plaintiff-Respondent,
v.
BOSTON SCIENTIFIC CORPORATION AND SCIMED LIFE SYSTEMS, INC., Defendants-Petitioners

On Petition for Permission to Appeal pursuant to 28 U.S.C. Section 1292(b) from the United States District Court for the Central District of California in No. 5:05-cv-00426-VAP-MRW, Judge Virginia Anne Phillips.

For G. David Jang, M.D., Plaintiff - Respondent: Jeffrey J. Toney, Esq., Darcy L. Jones, Esq., Jonathan K. Waldrop, Esq., Attorney, Kasowitz Benson Torres & Friedman, LLP, Atlanta, GA; Jed I. Bergman, Kasowitz, Benson, Torres & Friedman LLP, New York, NY.

For Boston Scientific Corporation, Scimed Life Sys-tems, Inc., Defendants - Petitioners: Matthew Wolf, Edward Han, John Nilsson, Arnold & Porter LLP, Washington, DC.

Before DYK, PLAGER, and LINN, Circuit Judges.

OPINION

Linn, Circuit Judge.

Page 1335

ORDER

Boston Scientific Corporation and Scimed Life Systems, Inc. petition for permission to appeal an order of the United States District Court for the Central District of California that denied summary judgment. The district court certified the order for appeal under 28 U.S.C. § 1292(b). On June 9, 2014, this court ordered the parties to address whether this court has jurisdiction over this petition in light of Gunn v. Minton, 133 S.Ct. 1059, 185 L.Ed.2d 72 (2013), or whether this petition should be transferred to the United States Court of Appeals for the Ninth Circuit. We have considered the submissions of the parties and for the reasons provided here decline to transfer and deny the petition for interlocutory review.

Background

This contract case comes before this court for a third time. The facts and procedural history of this contract case are set forth in Jang v. Boston Scientific Corp., 532 F.3d 1330s (Fed. Cir. 2008) (" Jang I " ) and Jang v. Boston Scientific Corp., 493 F.App'x 70l (Fed. Cir. 2012) (" Jang II " ); we recount only those pertinent to this petition. Respondent Dr. G. David Jang, M.D. and petitioners entered into an agreement whereby Jang assigned his rights in various patents to petitioners in exchange for an upfront payment and a promise under defined circum-stances to pay additional compensation if petitioners sold stents covered by Jang's patents.

In May 2005, Jang brought suit in federal court for breach of contract and other various state law claims, basing jurisdiction on diversity of citizenship and alleging that petitioners had failed to compensate Jang for the sale of certain covered stent products. In the first two appeals, this court addressed claim construction disputes relevant to whether the accused stents were covered by ( i.e., would have infringed) Jang's patents. While the case was on remand from this court after Jang II, petitioners filed requests for ex parte reexamination with the U.S. Patent and Trademark Office (" PTO" ), asserting that the claims of Jang's patents were invalid. The PTO granted petitioners' requests to initiate reexamination, and the exam-iner rejected the claims. Because petitioners did not respond to the office action or appeal, the claims at issue were canceled in issued reexamination certificates.

Page 1336

In light of the PTO proceedings, petitioners moved for summary judgment in the district court, arguing, inter alia, that under Lear, Inc. v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969), the parties' assignment agreement cannot require pay-ment for practice of claims subsequently held to be invalid. In March 2014, the district court denied the motion. In doing so, the district court found that under this court's decision in Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561 (Fed. Cir. 1997) (" Kohle " ), a patentee is not precluded under Lear from recovering royalties until the date the licensee or assignee first challenges the validity of the patent. Because the court concluded that Jang could seek royalties prior to a challenge to the validity of the patents, it denied the motion for summary judgment.

On petitioners' motion, the district court certified an interlocutory appeal of the order denying summary judgment pursuant to 28 U.S.C. ยง ...


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