Niazi Licensing Corp. v. St. Jude Medical S.C., Inc.

A common cause of congestive heart failure was the desynchronization of the right and left sides of the heart. One method of resynchronization involved inserting a catheter into a patient’s coronary sinus and branch veins and then passing electrical leads through the catheter to place them on the heart. Because it was often difficult to pass the leads through a traditional catheter, an inventor invented a double catheter that consisted of both an outer and an inner catheter to better navigate the coronary sinus and place the leads. The inventor obtained a patent for the invention, which came to be held by Niazi Licensing Corp. (Niazi) (plaintiff). Claim 1 of the patent described the catheter as consisting of (1) an outer, resilient catheter with shape memory and (2) an inner, pliable catheter that could slide within the outer catheter. Additional patent claims that were dependent on claim 1 provided example materials from which the outer catheter could be made. Also, written descriptions elsewhere in the patent provided additional information regarding both catheters, including examples of each type of catheter and whether the catheters were to be braided or unbraided. When Niazi sued St. Jude Medical S.C., Inc. (defendant) for infringing on the patent, St. Jude challenged the patent’s validity, claiming that the patent’s claims were indefinite and therefore invalid. The district court held in St. Jude Medical S.C.’s favor, declaring most of the patent’s claims, including claim 1, invalid for indefiniteness. Regarding claim 1, the court reasoned that the terms resilient and pliable were not sufficiently specific. Niazi appealed to the Federal Circuit.