## Facts

- Niazi Licensing Corporation owned U.S. Patent No. 6,638,268, directed to a “double catheter” system (outer catheter plus inner catheter) and related methods for cannulating the coronary sinus in cardiac resynchronization therapy.
- The patent described using an outer “resilient” catheter (with shape memory) and an inner “pliable” catheter slidably disposed within it to facilitate cannulation with reduced manipulation.
- St. Jude Medical S.C., Inc. sold cardiac delivery tools and leads that Niazi accused of infringing apparatus claims of the patent.
- Niazi also alleged St. Jude induced physicians to infringe method claim 11.
- The district court held the asserted claims (except method claim 11) invalid as indefinite under 35 U.S.C. § 112(b), focusing on terms such as “resilient” and “pliable.”
- The district court granted summary judgment of no induced infringement of claim 11 for lack of evidence of direct infringement by any physician.
- As discovery sanctions, the district court excluded parts of Niazi’s technical and damages expert reports for failure to disclose underlying factual bases during fact discovery and imposed monetary sanctions; it also excluded parts of the damages opinion as unreliable.

## Issues

1. Whether the asserted apparatus claims were indefinite under 35 U.S.C. § 112(b) because terms of degree such as “resilient” and “pliable” lacked objective boundaries.
2. Whether summary judgment of no induced infringement of method claim 11 was proper where Niazi lacked evidence that any physician directly performed all claimed steps.
3. Whether the district court abused its discretion in imposing monetary and evidentiary sanctions for discovery failures, including excluding portions of expert reports.
4. Whether the district court abused its discretion in excluding the damages expert’s opinions as conclusory and legally insufficient.

## Decision

- The Federal Circuit reversed the indefiniteness judgment as to the challenged claims and remanded for further proceedings.
- The Federal Circuit affirmed summary judgment of no induced infringement of method claim 11 due to failure to prove direct infringement.
- The Federal Circuit affirmed the discovery-related sanctions, including exclusion of portions of expert reports and monetary sanctions.
- The Federal Circuit affirmed exclusion of the damages expert opinions as conclusory and legally insufficient.

## Legal Principles

- A claim is indefinite only if, read in light of the specification and prosecution history, it fails to inform a person of ordinary skill in the art of the claim scope with reasonable certainty (Nautilus standard).
- Terms of degree are not per se indefinite; intrinsic evidence (including specification descriptions, examples, and narrowing dependent claims) can provide sufficient guidance to render such terms definite in context.
- Induced infringement under 35 U.S.C. § 271(b) requires proof of underlying direct infringement; absent competent evidence that a third party performed every step of a method claim, inducement fails.
- District courts may exclude expert opinions and impose monetary sanctions for discovery misconduct where a party fails to disclose predicate facts in discovery and later attempts to introduce them through expert testimony.
- Damages expert testimony must connect the proposed damages theory to case-specific facts and evidence; conclusory opinions may be excluded under reliability standards.

## Conclusion

The Federal Circuit held that “resilient” and “pliable” were not indefinite when construed in view of the patent’s intrinsic evidence, but it affirmed judgment against Niazi on induced infringement for lack of proof of direct infringement and upheld both discovery sanctions and exclusion of conclusory damages opinions.


Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th 1339 (Fed. Cir. 2022)