Stent inventor and cardiologist Dr. David Jang is requesting a Supreme Court review of stent patent royalty spat he had with Boston Scientific (NYSE:BSX) related to a coronary stent.
In the case, Dr. Jang claims that he developed a new coronary stent and patented it, then licensed it to Boston Scientific who agreed to pay him millions in royalties if the intellectual property was effectively developed into a competitive stent.
After developing and manufacturing such a stent, Dr. Jang and his representation claim that Boston Scientific refused to pay royalties related to the IP.
Dr. Jang sued Boston Scientific claiming patent infringement, with a jury finding in his favor, according to court documents.
The decision, however, was vacated based on a defense called “ensnarement”, which Dr. Jang and his legal representatives now hope to challenge at the Supreme Court.
“After fighting this battle for more than a decade, Dr. Jang established, to the satisfaction of a jury, that respondents had infringed his patent and owe him hundreds of millions of dollars as a result. The district court set aside the jury’s verdict based solely on the Federal Circuit’s made-up “ensnarement” defense, and the Federal Circuit affirmed. This case vividly il- lustrates that it is time for this Court to review the ensnarement defense,” legal council for Dr. Jang wrote in their writ for certiorari.
The ensnarement defense requires a patent holder to prove that a hypothetical equivalent would not ensnare prior art, and defense for Dr. Jang claims it is not listed in the Patent Act and has never been recognized by the supreme court.
Representation for Dr. Jang claim that the ensnarement defense was “made up” and that it “has no analogue in ordinary commercial litigation,” according to court documents.
“Dr. Jang represents every ideal of the American intellectual property system. As a practicing cardiologist, he recognized a problem in his field and used his knowledge, creativity, and hard work to create a solution. Respondents recognized the value in Dr. Jang’s invention and contracted to pay him millions of dol- lars for commercializing it. As the jury found, Dr. Jang deserves to reap the benefits of his ingenuity.” legal council wrote in the writ.
Last December, Dr. Jang was denied a re-hearing after a federal appeals court upheld a win from Boston Scientific in the long-running spat.
