Case 1:19-cv-11586-FDS Document 388-1 Filed 06/06/22 Page 1 of 17
`Case 1:19-cv-11586-FDS Document 388-1 Filed 06/06/22 Page 1 of 17
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`EXHIBIT A
`EXHIBIT A
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`

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`Case 1:19-cv-11586-FDS Document 388-1 Filed 06/06/22 Page 2 of 17
`
`
`
` Neutral
`As of: June 6, 2022 3:20 PM Z
`
`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc.
`
`United States Court of Appeals for the Federal Circuit
`April 11, 2022, Decided
`
`2021-1864
`
`
`
`Reporter
`30 F.4th 1339 *; 2022 U.S. App. LEXIS 9597 **
`
`NIAZI LICENSING CORPORATION, Plaintiff-Appellant
`v. ST. JUDE MEDICAL S.C., INC., Defendant-Appellee
`
`Prior History: [**1] Appeal from the United States
`District Court for the District of Minnesota in No. 0:17-
`cv-05096-WMW-BRT, Judge Wilhelmina M. Wright.
`
`
`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 2021
`U.S. Dist. LEXIS 54618, 2021 WL 1111074 (D. Minn.,
`Mar. 23, 2021)
`Niazi Licensing Corp. v. St. Jude Med. S.C., 2020 U.S.
`Dist. LEXIS 167562 (D. Minn., Sept. 14, 2020)
`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 2020
`U.S. Dist. LEXIS 117914, 2020 WL 3638771 (D. Minn.,
`July 6, 2020)
`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 2020
`U.S. Dist. LEXIS 58153, 2020 WL 1617879 (D. Minn.,
`Apr. 2, 2020)
`
`Disposition: AFFIRMED-IN-PART,
`PART, AND REMANDED.
`
`REVERSED-IN-
`
`Core Terms
`
`catheter, infringement, inner, outer, district court, vein,
`induced, steps, indefinite, inserting, summary judgment,
`resilient, pliable, damages, written description, terms,
`sanctions, coronary, skilled, recite, sinus, discovery,
`invalid, royalty, wire, exclusion order, patent, monetary
`sanctions, reasonable certainty, magistrate judge
`
`Case Summary
`
`
`and "pliable" were not purely subjective terms; the terms
`"resilient" and "pliable" would have had broad but
`understood meanings to a skilled artisan; [2]-The trial
`court properly excluded expert testimony because the
`witness did not even attempt to explain why a royalty
`based on use of the method would be impractical, he
`did not attempt to value any patient health advantages,
`nor did he identify evidence relating to the value of the
`claimed method relative to other methods or explain
`why such a valuation would not be possible.
`
`Outcome
`The judgment was affirmed in part, reversed in part, and
`remanded.
`
`LexisNexis® Headnotes
`
`
`
`
`
`Patent Law > Jurisdiction & Review > Standards of
`Review > De Novo Review
`
`Patent
`Law > ... > Specifications > Definiteness > Fact &
`Law Issues
`
`Patent Law > ... > Specifications > Enablement
`Requirement > Standards & Tests
`
`Patent Law > Infringement Actions > Prosecution
`History Estoppel > Prosecution Related Arguments
`& Remarks
`
`Overview
`objective
`provided
`record
`[1]-The
`HOLDINGS:
`boundaries by which a skilled artisan could determine
`the scope of the claims because the terms "resilient"
`
`Patent Law > ... > Defenses > Patent
`Invalidity > Grounds
`
`HN1[
`
`] Standards of Review, De Novo Review
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 388-1 Filed 06/06/22 Page 3 of 17
`Page 2 of 16
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`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc.
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`Definiteness is a statutory requirement for patentability.
`Under 35 U.S.C.S. § 112, a patent's specification must
`conclude with one or more claims particularly pointing
`out and distinctly claiming the subject matter which the
`applicant regards as his invention. A claim is indefinite
`only if, when read in light of the specification and
`prosecution history, it fails to inform, with reasonable
`certainty, those skilled in the art about the scope of the
`invention. Definiteness is a question of law that an
`appellate court reviews de novo. The reasonable
`certainty standard strikes a balance, affording clear
`notice of what is claimed while recognizing inherent
`limitations. Otherwise
`there would be a zone of
`uncertainty which enterprise and experimentation may
`enter only at the risk of infringement claims. While the
`legal test for definiteness does not require that a
`potential infringer be able to determine ex ante if a
`particular act infringes the claims, the public notice
`function underlying
`this patentability
`requirement
`demands that a patentee apprise the public of what is
`still open to them. This serves an important policy
`goal—providing clarity such that a person of ordinary
`skill in the art could determine whether or not an
`accused product or method infringes the claim. The
`definiteness requirement thus mandates clarity, while
`recognizing that absolute precision is unattainable.
`
`
`Patent
`Law > ... > Specifications > Definiteness > Precision
`Standards
`
`HN2[
`
`] Definiteness, Precision Standards
`
`While there must be objective boundaries, a patentee
`need not define his
`invention with mathematical
`precision in order to comply with the definiteness
`requirement. Indeed, patentees often use descriptive
`words to avoid a strict numerical boundary to the
`specified parameter. And courts have recognized that
`claim language employing terms of degree has long
`been found definite where it provided enough certainty
`to one of skill in the art when read in the context of the
`invention. True, descriptive words (or terms of degree)
`in a claim may inherently result in broader claim scope
`than a claim defined with mathematical precision. But a
`claim is not indefinite just because it is broad. For
`purposes of
`the definiteness
`inquiry,
`the problem
`patentees face by using descriptive words in their claims
`is not the potential breadth of those claims. It is whether
`the use of descriptive phrasing in the claim results in a
`claim that fails to inform, with reasonable certainty,
`
`those skilled in the art about the scope of the invention.
`
`
`Patent Law > Infringement Actions > Claim
`Interpretation > Aids & Extrinsic Evidence
`
` Claim
`]
`HN3[
`Evidence
`
`Interpretation, Aids & Extrinsic
`
`Terms of degree render a patent claim indefinite where
`the intrinsic evidence (or extrinsic evidence, where
`relevant and available) provides insufficient guidance as
`to any objective boundaries for the claims—including
`where the claims are purely subjective such that their
`scope cannot be determined with reasonable certainty.
`
`
`Patent Law > Infringement Actions > Claim
`Interpretation > Aids & Extrinsic Evidence
`
`Patent Law > Infringement Actions > Claim
`Interpretation > Scope of Claim
`
`Patent Law > Infringement Actions > Prosecution
`History Estoppel > Prosecution Related Arguments
`& Remarks
`
`Patent Law > Infringement Actions > Claim
`Interpretation > Construction Preferences
`
` Claim
`]
`HN4[
`Evidence
`
`Interpretation, Aids & Extrinsic
`
`Ultimately, patent claims with descriptive words or terms
`of degree must provide objective boundaries for those of
`skill in the art in the context of the invention to be
`definite. As with any question of claim construction, the
`intrinsic record—the patent's claims, written description,
`and prosecution history—along with any
`relevant
`extrinsic evidence can provide or help identify the
`necessary objective boundaries for claim scope.
`
`
`Civil Procedure > ... > Summary
`Judgment > Entitlement as Matter of
`Law > Appropriateness
`
`Patent Law > Infringement Actions > Summary
`Judgment > Appeals
`
`Civil Procedure > Judgments > Summary
`Judgment > Entitlement as Matter of Law
`
`
`
`
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 388-1 Filed 06/06/22 Page 4 of 17
`Page 3 of 16
`
`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc.
`
`Civil Procedure > ... > Summary
`Judgment > Summary Judgment
`Review > Standards of Review
`
`Civil Procedure > ... > Summary
`Judgment > Entitlement as Matter of Law > Genuine
`Disputes
`
` Entitlement
`]
`HN5[
`Appropriateness
`
`as Matter
`
`of
`
`Law,
`
`An appellate court reviews the district court's summary
`judgment under the law of the regional circuit. The
`Eighth Circuit reviews a grant of summary judgment de
`novo. Summary judgment is appropriate if the movant
`shows that there is no genuine dispute as to any
`material fact and the movant is entitled to judgment as a
`matter of law. Fed. R. Civ. P. 56(a).
`
`
`Patent Law > Infringement Actions > Summary
`Judgment > Claim Evaluation
`
`Patent Law > Infringement Actions > Claim
`Interpretation > Fact & Law Issues
`
`allegedly infringing act includes all the steps of the
`properly construed claim is a question of fact. Likewise,
`whether an alleged infringer knowingly induced and
`possessed specific intent to encourage that direct
`infringement is a question of fact. Summary judgment of
`noninfringement is appropriate when no reasonable
`juror could find that every step of a properly construed
`method claim was performed by the accused direct
`infringer.
`
`
`Civil Procedure > Appeals > Standards of
`Review > Abuse of Discretion
`
`HN7[
`
`] Standards of Review, Abuse of Discretion
`
`An appellate court reviews a district court's decision to
`sanction a litigant under Fed. R. Civ. P. 37 under the
`law of the regional circuit. The Eighth Circuit reviews a
`district court's entry of sanctions under Rule 37 for an
`abuse of discretion.
`
`
`Civil Procedure > Discovery &
`Disclosure > Disclosure > Mandatory Disclosures
`
`Patent Law > Jurisdiction & Review > Standards of
`Review > De Novo Review
`
`HN8[
`
`] Disclosure, Mandatory Disclosures
`
`Patent Law > ... > Defenses > Inequitable
`Conduct > Fact & Law Issues
`
`Patent Law > Infringement Actions > Infringing
`Acts > Intent & Knowledge
`
`HN6[
`
`] Summary Judgment, Claim Evaluation
`
`infringement generally
`A determination of patent
`requires a two-step analysis—the court first determines
`the scope and meaning of the claims asserted, and then
`the properly construed claims are compared to the
`allegedly infringing device (for an apparatus claim) or
`allegedly infringing act (for a method claim). For induced
`infringement under 35 U.S.C.S. § 271(b), the two steps
`become three. In addition to showing direct infringement
`by some party (e.g., a comparison of the properly
`construed claims to the allegedly infringing act), the
`patentee must also show that the alleged infringer
`knowingly induced infringement and possessed specific
`intent to encourage another's infringement. The first
`step—claim construction—is a question of law an
`appellate court reviews de novo to the extent it is
`decided only on the intrinsic evidence. Whether an
`
`Fed. R. Civ. P. 37(c)(1)(A) allows courts to impose
`reasonable expenses, including attorney fees for failure
`to provide information or identify a witness as required
`by Rule 26(a) or (e), specifying that the party is not
`allowed to use that information or witness to supply
`evidence on a motion, at a hearing, or at a trial unless
`the failure was substantially justified or is harmless.
`
`
`Civil Procedure > Discovery &
`Disclosure > Disclosure > Mandatory Disclosures
`
`Civil Procedure > Discovery &
`Disclosure > Discovery > Misconduct During
`Discovery
`
`HN9[
`
`] Disclosure, Mandatory Disclosures
`
`Even absent a court order excluding the nondisclosed
`information, where a party has
`failed
`to provide
`information or identify a witness as required by Fed. R.
`Civ. P. 26(a) or (e), Fed. R. Civ. P. 37(c)(1)(A) permits a
`court to impose monetary sanctions caused by the
`failure to disclose.
`
`
`
`
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 388-1 Filed 06/06/22 Page 5 of 17
`Page 4 of 16
`
`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc.
`
`
`
`Civil Procedure > Appeals > Standards of
`Review > Abuse of Discretion
`
`Evidence > Admissibility > Procedural
`Matters > Rulings on Evidence
`
`HN10[
`
`] Standards of Review, Abuse of Discretion
`
`An appellate court reviews a district court's decision to
`exclude expert testimony for an abuse of discretion.
`
`
`Patent Law > Remedies > Damages > Infringer's
`Profits
`
`HN11[
`
`] Damages, Infringer's Profits
`
`Damages should be apportioned to separate out non-
`infringing uses, and patentees cannot recover damages
`based on sales of products with the mere capability to
`practice the claimed method. Rather, where the only
`asserted claim is a method claim, the damages base
`should be limited to products that were actually used to
`perform the claimed method.
`
`Counsel: MICHAEL T. GRIGGS, Boyle Fredrickson,
`S.C., Milwaukee, WI, argued for plaintiff-appellant. Also
`represented by ADAM BROOKMAN, MARRIAM LIN,
`TIMOTHY NEWHOLM.
`
`KALPESH SHAH, Benesch Friedlander Coplan &
`Aronoff, Chicago, IL, argued for defendant-appellee.
`Also represented by SAMUEL RUGGIO.
`
`Judges: Before TARANTO, BRYSON, and STOLL,
`Circuit Judges.
`
`Opinion by: STOLL
`
`Opinion
`
`
`
` [*1342] STOLL, CIRCUIT JUDGE.
`
`This appeal asks us to resolve numerous issues: validity
`and infringement of various claims of U.S. Patent No.
`6,638,268; several evidentiary
`rulings; and
`the
`appropriateness of the U.S. District Court for the District
`of Minnesota's entry of sanctions against Appellant Niazi
`Licensing Corporation. First, Niazi appeals the district
`court's determination that all but one of the asserted
`
`claims of the '268 patent are invalid as indefinite. We
`conclude that, when read in light of the intrinsic
`evidence, a person of ordinary skill in the art would
`understand the scope of the claims with reasonable
`certainty. Accordingly, we reverse that determination
`and remand for the district court to resolve [**2]
`whether Appellee St. Jude Medical S.C., Inc. (St. Jude)
`has infringed those claims and whether its remaining
`invalidity defenses are applicable. Second, Niazi
`appeals the district court's summary judgment of no
`induced infringement of the only asserted claim it did not
`hold indefinite. We agree with the district court that Niazi
`failed
`to prove direct
`infringement—a necessary
`element of Niazi's inducement claim—and therefore
`affirm that judgment. Third, Niazi appeals the district
`court's sanction excluding portions of Niazi's technical
`expert [*1343] and damages expert reports because
`Niazi failed to disclose the predicate facts during fact
`discovery and granting monetary sanctions. Because
`Niazi points to no abuse of discretion, we affirm the
`district court's entry of sanctions. Finally, Niazi appeals
`the district court's exclusion of portions of its damages
`expert report as unreliable. Because we agree that the
`damages opinion was
`conclusory and
`legally
`insufficient, we affirm that exclusion as well.
`
`
`BACKGROUND
`I
`
`Congestive heart failure is a common medical condition
`leading to hospital admission in the United States. Heart
`failure is frequently a result of the left and right sides of
`the heart [**3] contracting out of sync. There are
`different methods available for treating heart failure,
`such as medication or a heart transplant. Another
`method
`is
`resynchronization
`therapy, which uses
`electrical leads (called pacing leads) to help keep the
`two sides of the heart contracting with regularity and in
`sync.
`
`According to the '268 patent, at the time of the invention,
`physicians accomplished resynchronization therapy by
`inserting a catheter into the coronary sinus1 and its
`branch veins (i.e., cannulating) to place pacing leads on
`the hearts of patients with heart failure. '268 patent col.
`1 ll. 29-35. Because the target coronary branch veins
`arise at acute angles to the coronary sinus and because
`heart failure can cause changes in the heart's anatomy
`
`
`
`1 The coronary sinus is a major vein that "forms a part of the
`venous drainage of the heart." '268 patent col. 1 ll. 13-15.
`
`
`
`
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 388-1 Filed 06/06/22 Page 6 of 17
`Page 5 of 16
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`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc.
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`(including, for instance, the location, shape, and size of
`the coronary sinus and
`the branch veins),
`the
`specification explains that it can be "difficult to pass a
`lead" into the coronary sinus and its branch veins using
`a catheter. Id. at col. 1 l. 61-col. 2 l. 11. Recognizing
`this, the inventor of the '268 patent developed a double
`catheter—i.e., a catheter comprising an outer and inner
`catheter—for cannulating the coronary sinus "without
`significant manipulation," id. [**4] Abstract, which he
`claimed in the '268 patent.
`
`Claim 1 (an apparatus claim) and claim 11 (a method
`claim) are representative of the claims on appeal and
`recite:
`1. A double catheter, comprising:
`
`an outer, resilient catheter having shape
`memory and a hook shaped distal end
`configured for cannulation of the coronary
`sinus with at least one curved bend; an inner,
`pliable catheter slidably disposed in the outer
`catheter and of greater length than the outer
`catheter so that a distal end portion of the inner
`catheter can be extended or retracted from a
`distal end opening of the outer catheter to vary
`the overall length of the double catheter, the
`inner catheter having an
`internal
`lumen
`configured
`for
`the
`introduction of contrast
`media and a pacing lead into the coronary
`sinus; and
`a mechanism operable from the proximal end
`of the outer catheter for changing the curvature
`of the distal end of the outer catheter.
`
`. . .
`11. A method for placing an electrical lead in a
`lateral branch of a coronary sinus vein using a
`double catheter including an outer catheter and an
`inner catheter slidably disposed inside the outer
`catheter, comprising:
`
`[1] inserting the catheter into the coronary
`sinus;
`
` [*1344] [2] advancing a guide [**5] wire
`through the catheter into a coronary sinus
`lateral branch vein;
`
`[3] advancing the inner catheter out of a front
`end opening of the outer catheter along the
`guide wire into the branch vein;
`[4] inserting the lead through the outer and
`inner catheters to a target location in the
`branch vein; and
`
`[5] withdrawing the catheter leaving the lead in
`the branch vein.
`
`Id. at col. 6 l. 62-col. 7 l. 9, col. 7 l. 63-col. 8 l. 9
`(emphases added to disputed limitations).
`II
`
`Niazi sued St. Jude for patent infringement. Niazi
`accused combinations of St. Jude's products, including
`the CPS Aim™ SL Slittable
`Inner Catheter
`(Subselector/Cannulator), of directly infringing the '268
`patent claims, and it further accused St. Jude of
`inducing infringement of the '268 patent claims.
`
`The district court construed numerous terms in claims 1,
`10-11, 13-15, 18-19, and 23-27 (the "asserted claims")
`that are relevant to this appeal. First, the district court
`determined that the terms "resilient" and "pliable" in
`independent claims 1, 13, 18, and 24 of the '268 patent
`rendered those claims and their dependents (claims 10,
`14-15, 19, 23, and 25-27) indefinite. See Niazi Licensing
`Corp. v. Bos. Sci. Corp., Case Nos. 17-cv-5094
`(WMW/BRT), 17-cv-5096 (WMW/BRT), 2019 U.S. Dist.
`LEXIS 181611, 2019 WL 5304922, at *5-7 (D. Minn.
`Oct. 21, 2019) (Claim Construction Op.). The parties
`dispute this determination on appeal.
`
`The court then [**6] considered independent claim 11,
`the only asserted claim that does not recite the terms
`"resilient" or "pliable." The parties first disputed whether
`the term "the catheter" in claim 11 rendered that claim
`indefinite based on a lack of antecedent basis in the
`claim. The court determined that the claim was not
`indefinite, construing "the catheter" to mean "the double
`catheter." 2019 U.S. Dist. LEXIS 181611, [WL] at *8.
`This construction, while relevant, is not disputed on
`appeal.
`
`The parties' second dispute as to claim 11 concerned
`whether the steps recited in claim 11 must be performed
`in the order recited in the claim, or whether mere
`performance of all steps (in any order) was sufficient to
`meet the claim. The district court determined that "logic
`requires the steps of [c]laim 11 to be performed in the
`order listed" and accordingly concluded that claim 11 "is
`infringed only when the steps are performed in the order
`listed." Id. This second construction is not meaningfully
`disputed on appeal.
`
`Following fact discovery, the parties exchanged expert
`reports concerning infringement and validity of claim 11,
`as well as the amount of damages for any alleged
`infringement of that claim. St. Jude moved to strike
`portions of Niazi's [**7] technical expert (Dr. Martin
`
`
`
`
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 388-1 Filed 06/06/22 Page 7 of 17
`Page 6 of 16
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`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc.
`
`Burke) report and its damages expert (Brad Carlson)
`report for improperly relying on facts that were not
`disclosed during fact discovery. Regarding Dr. Burke's
`report, St. Jude argued that Niazi did not disclose facts
`relating to alleged direct infringement—specifically, that
`Dr. Burke himself had directly infringed claim 11 using
`St. Jude's CPS catheter—which was relevant to Niazi's
`theory of induced infringement for this claim. As to Mr.
`Carlson's report, St. Jude argued that his reliance on
`several third-party license agreements to support his
`damages calculation was
`improper because
`those
`agreements had not been produced during
`fact
`discovery.
`
`The magistrate judge agreed with St. Jude and, as a
`sanction under Federal Rule of Civil Procedure 37,
`excluded portions of both reports and further precluded
`Dr. Burke from testifying as a fact witness. See J.A.
`140-54. Niazi objected to [*1345] this decision, but the
`district court judge agreed with the magistrate judge's
`decision that this undisclosed evidence should be
`excluded and that Dr. Burke should be precluded from
`testifying as a fact witness. Niazi Licensing Corp. v. St.
`Jude Med. S.C.,
`Inc., Case No. 17-cv-5096
`(WMW/BRT), 2020 U.S. Dist. LEXIS 58153, 2020 WL
`1617879, at *1-3 (D. Minn. Apr. 2, 2020) (Sanctions Op.
`I).
`
`Not long thereafter, the district court considered the
`parties' cross-motions to [**8] exclude certain expert
`testimony as unreliable under Federal Rule of Evidence
`702 and Daubert v. Merrill Dow Pharmaceuticals, Inc.,
`509 U.S. 579, 113 S. Ct. 2786, 125 L. Ed. 2d 469
`(1993). Relevant to this appeal, St. Jude moved to
`exclude Mr. Carlson's damages opinion, arguing that he
`failed to properly apportion damages to the value
`attributable to claim 11's method. The district court
`agreed, reasoning that Mr. Carlson's opinion failed to
`"apportion" between infringing and noninfringing uses
`and improperly included leads in the royalty base. Niazi
`Licensing Corp. v. St. Jude Med. S.C., Inc., Case No.
`17-cv-5096
`(WMW/BRT), 2020 U.S. Dist. LEXIS
`167562, 2020 WL 5512507, at *9-11 (Sept. 14, 2020)
`(Daubert Op.). The district court accordingly held Mr.
`Carlson's opinion inadmissible. Id.
`
`for summary
`thereafter cross-moved
`The parties
`judgment on numerous issues, but only one of those—
`the issue of induced infringement of claim 11—is
`relevant here. Niazi submitted a declaration from Dr.
`Burke in support of its summary judgment motion. In St.
`Jude's view, Dr. Burke's declaration recounted various
`factual assertions that the magistrate judge previously
`
`ordered excluded. After the parties were unable to
`resolve the dispute regarding the scope of Dr. Burke's
`declaration, St. Jude moved to enforce the magistrate
`judge's exclusion order and sought monetary sanctions.
`The magistrate judge agreed with St. Jude, ordering all
`"facts disclosed by Dr. Burke
`that were not
`disclosed [**9] by
`the
`fact discovery deadline be
`stricken" from his declaration. J.A. 220 (Hr'g Tr. 63:15-
`19). The magistrate judge also awarded St. Jude
`attorney fees and costs associated with its motion to
`enforce the exclusion order. J.A. 220-21 (Hr'g Tr. 63:20-
`64:3). Niazi objected to this decision, but the district
`court judge affirmed the magistrate judge's exclusion
`order and award of sanctions. Niazi Licensing Corp. v.
`St. Jude Med. S.C.,
`Inc., Case No. 17-cv-5096
`(WMW/BRT), 2020 U.S. Dist. LEXIS 117914, 2020 WL
`3638771, at *4 (D. Minn. July 6, 2020) (Sanctions Op.
`II).
`
`The district court then addressed the merits of the
`induced infringement issue. As a result of the various
`exclusion orders (and a ruling on inadmissibility of
`certain evidence that is not challenged on appeal),
`Niazi's induced infringement case rested on St. Jude's
`instructions for use (IFUs) for its CPS catheter. The
`district court determined that Niazi "failed to present
`evidence to support either" direct infringement or that St.
`Jude possessed specific intent to encourage another's
`infringement, both of which are necessary to impose
`liability for induced infringement. Niazi Licensing Corp.
`v. St. Jude Med. S.C., Inc., Case No. 17-cv-5096
`(WMW/BRT), 2021 U.S. Dist. LEXIS 54618, 2021 WL
`1111074, at *8 (D. Minn. Mar. 23, 2021) (Summary
`Judgment Op.).
`
`As to direct infringement, the district court determined
`that the IFUs required the performance of the claim
`steps in an order different than that required by the
`claims and, therefore, [**10] that doctors performing the
`steps in the IFUs did not directly infringe claim 11 as a
`matter of law. 2021 U.S. Dist. LEXIS 54618, [WL] at *4-
`7. The district court also determined that there was no
`material dispute of fact as to the intent element. The
`court explained that, not only did St. Jude's IFUs
`"substantively differ" from the claimed method, but many
`of the steps [*1346] recited in the IFUs were "optional,"
`thus negating specific intent to induce. 2021 U.S. Dist.
`LEXIS 54618, [WL] at *7. The district court accordingly
`entered summary judgment of no induced infringement
`of claim 11 in St. Jude's favor and dismissed St. Jude's
`counterclaim of invalidity for that claim.
`
`Niazi appeals. We have jurisdiction under 28 U.S.C. §
`
`
`
`
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 388-1 Filed 06/06/22 Page 8 of 17
`Page 7 of 16
`
`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc.
`
`1295(a)(1).
`
`
`DISCUSSION
`
`On appeal, Niazi challenges: (1) the district court's
`determination that claims 1, 10, 13-15, 18-19, and 23-27
`are invalid as indefinite; (2) the district court's summary
`judgment of no induced infringement of claim 11; (3) the
`district court's imposition of sanctions against Niazi
`under Federal Rule of Civil Procedure 37 excluding
`portions of Dr. Burke's and Mr. Carlson's expert reports
`and awarding monetary sanctions for violating that
`order; and (4) the district court's exclusion of Mr.
`Carlson's opinion as unreliable under Daubert. We
`address each in turn.
`I
`
`We begin with Niazi's assertion [**11] that the district
`court erred in holding that the terms "resilient" and
`"pliable" render claims 1, 10, 13-15, 18-19, and 23-27
`invalid as indefinite. For the reasons below, we agree
`with Niazi, and accordingly, we reverse.
`A
`
`] Definiteness is a statutory requirement for
`HN1[
`patentability. Under 35 U.S.C. § 112, ¶ 2,2 a patent's
`specification must "conclude with one or more claims
`particularly pointing out and distinctly claiming the
`subject matter which the applicant regards as his
`invention." A claim is indefinite only if, when "read in
`light of the specification" and "prosecution history," it
`"fail[s] to inform, with reasonable certainty, those skilled
`in the art about the scope of the invention." Nautilus,
`Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901, 134
`S. Ct. 2120, 189 L. Ed. 2d 37 (2014). Definiteness is a
`question of law that we review de novo. Mass. Inst. of
`Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1123-24
`(Fed. Cir. 2016).
`
`As the Supreme Court explained in Nautilus, language
`has "inherent
`limitations." 572 U.S. at 909. The
`reasonable certainty standard exists to strike a "delicate
`balance," "afford[ing] clear notice of what is claimed"
`while recognizing such inherent limitations. Id. (quoting
`
`
`2 Because the '268 patent does not contain any claim with an
`effective filing date on or after September 16, 2012, the
`applicable version of § 112 is the one preceding the changes
`made by the America Invents Act. See Leahy—Smith America
`Invents Act, Pub. L. No. 112-29 § 4(e), 125 Stat. 284, 297
`(2011).
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
`535 U.S. 722, 731, 122 S. Ct. 1831, 152 L. Ed. 2d 944
`(2002)). "Otherwise
`there would be
`'[a] zone of
`uncertainty which enterprise and experimentation may
`enter only at the risk of infringement claims.'" Id. at 909-
`10 (alteration in original) (quoting United Carbon Co. v.
`Binney & Smith Co., 317 U.S. 228, 236, 63 S. Ct. 165,
`87 L. Ed. 232, 1943 Dec. Comm'r Pat. 758 (1942)).
`While the legal test [**12] for definiteness "does not
`require that a potential infringer be able to determine ex
`ante if a particular act infringes the claims," Nevro Corp.
`v. Bos. Sci. Corp., 955 F.3d 35, 40 (Fed. Cir. 2020), the
`public notice
`function underlying
`this patentability
`requirement demands that a patentee apprise the public
`"of what is still open to them," Nautilus, 572 U.S. at 909
`(quoting Markman v. Westview Instruments, Inc., 517
`U.S. 370, 373, 116 S. Ct. 1384, 134 L. Ed. 2d 577
`(1996)). This serves an important policy goal—providing
`clarity such [*1347] that a person of ordinary skill in the
`art could determine whether or not an accused product
`or method infringes the claim. See Meds. Co. v. Mylan,
`Inc., 853 F.3d 1296, 1303 (Fed. Cir. 2017) (quoting
`Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349
`F.3d 1373, 1384 (Fed. Cir. 2003)). The definiteness
`requirement thus "mandates clarity, while recognizing
`that absolute precision is unattainable." Nautilus, 572
`U.S. at 910.
`
`] While there must be objective boundaries, "we
`HN2[
`have explained that 'a patentee need not define his
`invention with mathematical precision in order to comply
`with the definiteness requirement.'" Guangdong Alison
`Hi-Tech Co. v. Int'l Trade Comm'n, 936 F.3d 1353, 1359
`(Fed. Cir. 2019) (quoting Sonix Tech. Co. v. Publ'ns Int'l,
`Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017)). Indeed,
`patentees often use "[d]escriptive words . . . to 'avoid[] a
`strict numerical boundary to the specified parameter.'"
`Braintree Lab'ys, Inc. v. Novel Lab'ys, Inc., 749 F.3d
`1349, 1360 (Fed. Cir. 2014) (third alteration in original)
`(quoting Pall Corp. v. Micron Separations, Inc., 66 F.3d
`1211, 1217 (Fed. Cir. 1995)). And we have recognized
`that "[c]laim language employing terms of degree has
`long been found definite where it provided enough
`certainty to one of skill in the art when read in the
`context of the invention." Interval Licensing LLC v. AOL,
`Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014).
`
`True, descriptive [**13] words (or terms of degree) in a
`claim may inherently result in broader claim scope than
`a claim defined with mathematical precision. But a claim
`is not indefinite just because it is broad. See, e.g., BASF
`Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1367
`(Fed. Cir. 2017) (reiterating, after Nautilus, that "breadth
`
`
`
`
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 388-1 Filed 06/06/22 Page 9 of 17
`Page 8 of 16
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`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc.
`
`is not indefiniteness" (quoting SmithKline Beecham
`Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir.
`2005))); Ultimax Cement Mfg. Corp. v. CTS Cement
`Mfg. Corp., 587 F.3d 1339, 1351 (Fed. Cir. 2009)
`(determining, pre-Nautilus, that a claim term, "even if
`construed to be as broad as the district court construed
`it
`to be, does not
`render
`the claim
`insolubly
`ambiguous"); Cap. Sec. Sys., Inc. v. NCR Corp., 725 F.
`App'x 952, 957 (Fed. Cir. 2018) (determining, post-
`Nautilus, that broad claim language did not render the
`claim indefinite when read in light of the written
`description). For purposes of the definiteness inquiry,
`the problem patentees face by using descriptive words
`in their claims is not the potential breadth of those
`claims. It is whether the use of descriptive phrasing in
`the claim results in a claim that "fail[s] to inform, with
`reasonable certainty, those skilled in the art about the
`scope of the invention." Nautilus, 572 U.S. at 901.
`
`group in a chemical compound was "not interfering
`substantially" with the ability of that compound to
`hybridize with a nucleic acid. Id. at 1329. We explained
`that, while the claims did not define "not interfering
`substantially" with mathematical precision, the intrinsic
`evidence provided guideposts for a skilled artisan to
`determine the scope of the claims. Id. at 1335. This
`evidence included certain dependent claims, which
`recited exemplary
`linkage groups
`that would not
`interfere substantially with hybridization, and additional
`exemplary linkage groups found in both the written
`description and prosecution history that, likewise, would
`not interfere substantially with hybridization. Id. at 1334-
`35. In other words, the intrinsic evidence provided a
`skilled artisan with examples with whi