Claim Construction Requires Infringement Context

Jang v Boston Scientific Corporation [2007-1385] (July 15, 2008) [DYK, Gajarsa, Linn] The Federal Circuit vacated judgment was not clear how the appealed claim constructions would render the accused products infringing or noninfringing.
SIGNIFICANCE: The lack of information concerning infringement makes it difficult to comprehend the claim construction issues, concluding it lacked “a proper context for an accurate claim construction.”
BRIEF: The district court issued a claim construction opinion, as a result of which the parties agreed that Jang could not prove that the accused products were “covered by” (i.e., infringed) the asserted patents, and that summary judgment should be entered, so that Jang could appeal. The stipulation did not explain why the district court’s claim construction resulted in non-liability. The Federal Circuit said that A judgment is reviewable only if it is possible for the appellate court to ascertain the basis for the judgment challenged on appeal. The Federal Circuit identified two defects with the judgment: First, it was impossible to discern from the stipulated judgment which of the district court’s claim construction rulings would actually affect the issue of infringement. Second, the stipulated judgment provided no factual context for the claim construction issues presented by the parties. In particular, nothing in the stipulated judgment provides any context with respect to how the disputed claim construction rulings relate to the accused products. The Federal Circuit said that is has emphasized the importance of the context provided by an analysis of the accused device when ruling on claim construction. The Federal Circuit said that The lack of information concerning infringement makes it difficult to comprehend the claim construction issues, concluding it lacked “a proper context for an accurate claim construction.”