Nazir Khan v. Merit Medical Systems, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
NAZIR KHAN,
Plaintiff-Appellant
IFTIKHAR KHAN,
Plaintiff
v.
MERIT MEDICAL SYSTEMS, INC.,
Defendant-Appellee
______________________
2023-2329
______________________
Appeal from the United States District Court for the
District of Utah in No. 2:21-cv-00337-HCN-CMR, Judge
Howard C. Nielson, Jr.
______________________
Decided: July 16, 2024
______________________
N AZIR K HAN, Burr Ridge, IL, pro se.
BRENT P. L ORIMER , Lorimer Ip, PLLC, Midvale, UT, for
defendant-appellee. Also represented by D AVID R. T ODD,
T HOMAS R. VUKSINICK, Workman Nydegger, Salt Lake
City, UT.
______________________
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KHAN v. MERIT MEDICAL SYSTEMS, INC. 2
Before M OORE, Chief Judge, L OURIE and STARK, Circuit
Judges.
P ER CURIAM .
Nazir Khan, owner of a patent directed to an arteriove-
nous shunt with several parts, filed a patent infringement
suit against Merit Medical Systems, Inc. (“Merit Medical”)
in the United States District Court for the District of Utah.
Merit Medical counterclaimed for a declaratory judgment
of non-infringement. The district court granted judgment
for Merit Medical and against Khan. Khan appeals.1 We
affirm.
I
Mr. Khan owns U.S. Patent No. 8,747,344 (the “’344
patent”). The ’344 patent is directed to a shunt used for
hemodialysis and methods for using that shunt. Claim 13,
the sole claim at issue here, recites in pertinent part (with
emphasis added):
13. A system for performing hemodialysis on a pa-
tient comprising:
a. an arteriovenous shunt means compris-
ing:
i. an arterial graft means compris-
ing a body, a lead end and a termi-
nal end, . . . ; and
ii. a-single lumen venous outflow
catheter means comprising an
1 The complaint was filed by Nazir Khan along with
Iftikhar Khan. We granted Iftikhar Khan’s motion to be
removed from the appeal. Our references throughout to
“Khan,” therefore, are to Nazir Khan.
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KHAN v. MERIT MEDICAL SYSTEMS, INC. 3
intake end and depositing end . . . ;
and
iii. a cuff means comprising an inlet
and an outlet, wherein:
1. said cuff is disposed about
said terminal end of said subcu-
taneous graft; and
2. said cuff is disposed about
said intake end of said venous
outflow catheter; and
3. wherein the cuff provides a se-
cure fit for said arterial graft
first diameter and said venous
outflow catheter second diame-
ter; and
b. a hemodialysis apparatus.
U.S. Patent No. 8,282,591 (the “’591 patent”) is the par-
ent to the ’344 patent. Initially, the claims contained in the
application that eventually yielded the ’591 patent re-
quired the “inlet” and “outlet” of a “cuff” to be “connected
to” a graft and a catheter, respectively. See S. App’x 424-
27.2 These claims were rejected by a patent examiner as
obvious over U.S. Patent No. 6,102,884 (“Squitieri”), which
disclosed a device “connected to” a graft and a catheter. In
response to the rejection, Khan proposed amended claims,
which required that in addition to being “connected to” a
graft and a catheter, the cuff also be “disposed about” the
ends of the graft and catheter. After the examiner rejected
these proposed amended claims, Khan appealed to the
Board of Patent Appeals and Interferences (“Board”),
2 We refer to the appendix attached to Khan’s Open-
ing Brief as “App’x” and to the supplemental appendix filed
by Merit Medical as “S. App’x.”
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KHAN v. MERIT MEDICAL SYSTEMS, INC. 4
which found Khan’s distinction of Squitieri persuasive,
concluding that the cuff of Khan’s amended claims “encir-
cles” and “wraps around” the graft and catheter while
Squitieri’s cuff was disposed “within” the graft and cathe-
ter. S. App’x 468-74, 705-06. The ’591 patent issued with
the “disposed about” limitation in 2012.
The ’344 patent issued in 2014. S. App’x 53. Similar
to the prosecution leading to issuance of the ’591 patent,
Khan originally proposed claims in which the cuff was
broadly permitted to be “connected to” the graft and the
catheter. After the claims of the ’591 patent were ap-
proved, Khan amended his proposed claims to require a
“cuff means” instead of a “cuff”. After receiving a rejection
based on Squitieri, Khan further amended the proposed
claims to require that the cuff means be “disposed about”
the graft and catheter. Only after this amendment were
the claims allowed.
Subsequently, Khan filed a reissue application for the
’591 parent patent. In doing so, he sought claims that
would have eliminated the “disposed about” limitation, ex-
plaining that he needed these broader claims in order to
pursue infringement cases against companies, including
Merit Medical, “who cannot be sued without [claims] hav-
ing a connector with broadened scope so that [the accused]
connector can be [found to infringe if it is] used in a dis-
posed or non-disposed way.” S. App’x 374; see also S. App’x
372-73 (“The patent owner cannot literally sue the in-
fringer unless the cuff connector is broadened in scope to
connect the graft and the catheter in different ways, dis-
posed or non-disposed.”). The examiner rejected the reis-
sue application, which the Board and then this court
affirmed. See In re Khan, 722 F. App’x 1038, 1041 (Fed.
Cir. 2018).
Merit Medical markets the accused product, the HeRO
Graft, a shunt used for hemodialysis. It is undisputed that,
as even Khan has described it, the HeRO Graft has a
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KHAN v. MERIT MEDICAL SYSTEMS, INC. 5
connector that is “disposed within” or “in” the ends of the
graft and catheter. S. App’x 70. This is in contrast to claim
13 of the ’344 patent, which requires a connector “disposed
about” the graft and catheter.
Khan’s complaint alleged that the HeRO Graft in-
fringes the ’334 patent literally and under the doctrine of
equivalents, directly and indirectly, and willfully. The dis-
trict court granted Merit Medical’s motion for summary
judgment of non-infringement, as well as its counterclaim
for declaratory judgment of non-infringement, after con-
cluding that no reasonable juror could find that the accused
HeRO Graft met the “disposed about” limitation, under any
of Khan’s theories of infringement.
After we dismissed a premature appeal by Khan, see
Khan v. Merit Medical Systems, Inc., No. 23-1054 (Fed. Cir.
Dec. 29, 2022), the district court entered final judgment of
non-infringement and Khan timely appealed.3
II
We review a grant of summary judgment applying the
law of the regional circuit, here the Tenth Circuit, which
reviews a grant of summary judgment de novo. See D
Three Enters., LLC v. SunModo Corp., 890 F.3d 1042, 1046
(Fed. Cir. 2018). Summary judgment is appropriate if the
movant “shows that there is no genuine dispute as to any
3 The district court had jurisdiction under 28 U.S.C.
§§ 1331 and 1338(a). We have jurisdiction under 28 U.S.C.
§ 1295(a)(1). However, to the extent Khan is challenging
the district court’s order requiring him to pay Merit Medi-
cal’s attorney fees, pursuant to 35 U.S.C. § 285, we lack ju-
risdiction, as the district court did not enter a final order
with respect to attorney fees. See Elbit Sys. Land & C4I
Ltd. v. Hughes Network Sys., LLC, 927 F.3d 1292, 1303-06
(Fed. Cir. 2019).
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KHAN v. MERIT MEDICAL SYSTEMS, INC. 6
material fact and the movant is entitled to judgment as a
matter of law.” Fed. R. Civ. P. 56(a).
Issues unique to patent law, such as claim construction
and infringement, are reviewed according to Federal Cir-
cuit law. See AbbVie Deutschland GmbH & Co., KG v.
Janssen Biotech, Inc., 759 F.3d 1285, 1295 (Fed. Cir. 2014).
Infringement generally requires a factual determination as
to whether all of the limitations of a claim, properly con-
strued, are met by an accused device. See Akzo Nobel Coat-
ings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1339 (Fed. Cir.
2016) (“Infringement, whether literal or under the doctrine
of equivalents, is a question of fact.”). “As such, it is ame-
nable to summary judgment where, inter alia, no reasona-
ble fact finder could find infringement.” Ethicon Endo-
Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315
(Fed. Cir. 1998). With respect to “questions of claim con-
struction, including whether claim language invokes 35
U.S.C. § 112[(f)], the district court’s determinations based
on evidence intrinsic to the patent as well as its ultimate
interpretations of the patent claims[,] are legal questions
that we review de novo.” Williamson v. Citrix Online, LLC,
792 F.3d 1339, 1346 (Fed. Cir. 2015). However, “[t]o the
extent the district court, in construing the claims, makes
underlying findings of fact based on extrinsic evidence, we
review such findings of fact for clear error.” Id.
III
Khan’s arguments on appeal are somewhat confusing.
What is clear, however, is that the district court committed
no error in granting summary judgment to Merit Medical
determining that its accused HeRO Graft product does not
infringe claim 13 of the ’344 patent under any theory of in-
fringement. We agree with Merit Medical and the district
court that there is no genuine dispute of material fact and
summary judgment of non-infringement is warranted.
Khan cannot prove literal infringement. Claim 13 re-
quires a “cuff means” “disposed about” the graft and the
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KHAN v. MERIT MEDICAL SYSTEMS, INC. 7
catheter. Khan does not challenge the district court’s (cor-
rect) construction that “disposed about” requires a cuff
means that is “wrapped around, encircles, and covers the
outside of the outlet end of an arterial graft and the inlet
end of a venous outflow catheter.” App’x 4. It is further
undisputed that the HeRO Graft has a cuff that is “dis-
posed within” the graft and catheter and, therefore, is not
literally “disposed about” the graft and catheter. See S.
App’x 70.
These realities are not dispositive, Khan contends, be-
cause he also asserts infringement under the doctrine of
equivalents. Under the doctrine of equivalents, “a product
or process that does not literally infringe upon the express
terms of a patent claim may nonetheless be found to in-
fringe if there is ‘equivalence’ between the elements of the
accused product or process and the claimed elements of the
patented invention.” Warner-Jenkinson Co. v. Hilton Da-
vis Chem. Co., 520 U.S. 17, 21 (1997). Among the several
fatal deficiencies to Khan’s contention is that he, during
prosecution of both the ’344 patent and the parent ’591 pa-
tent, amended his proposed claims and made arguments
disclaiming cuffs that are connected within the graft and
catheter, as in Squitieri.4 A patentee may not rely on the
doctrine of equivalents to assert infringement against a de-
vice that falls within the scope of what the patentee dis-
claimed during prosecution. See Spectrum Int’l, Inc. v.
Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1998)
(“[B]y distinguishing the claimed invention over the prior
art, an applicant is indicating what the claims do not
4 Khan’s contention that he did not amend his claims
during prosecution is plainly belied by the prosecution his-
tory. See S. App’x 468-74, 505-14, 516-21; see also App’x 20
(“Plaintiff[’s] claim that [he] did not amend Claim 13 to
overcome Squitieri by adding the ‘disposed about’ limita-
tion is false.”).
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KHAN v. MERIT MEDICAL SYSTEMS, INC. 8
cover.”) (internal quotation marks omitted). Moreover,
Khan himself repeatedly explained during prosecution that
he could not assert claim 13 of the ’344 patent against a
device, including specifically the HeRO Graft, in which the
cuff means was “disposed within” the graft and catheter.
S. App’x 373-74, 348. His clear and unambiguous dis-
claimer of claim scope estops him from asserting that em-
bodiments – such as the HeRO Graft and Squitieri –
infringe. See Augustine Med., Inc. v. Gaymar Indus., Inc.,
181 F.3d 1291, 1299 (Fed. Cir. 1999) (“If sufficient to evince
a clear and unmistakable surrender of subject matter, ar-
guments made during prosecution may . . . estop an appli-
cant from recapturing that surrendered matter under the
doctrine of equivalents.”) (internal quotation marks omit-
ted).
Khan also insists that claim 13 is a means-plus-func-
tion claim, governed by 35 U.S.C. § 112(f). We need not
decide whether “cuff means” is a means-plus-function ele-
ment because, as Merit Medical correctly points out, “even
if ‘cuff means’ is a means-plus-function element, satisfac-
tion of that element would not somehow make up for the
absence of the ‘disposed about limitation.’” Response Br. at
32. To raise a triable issue of infringement, Khan must
produce sufficient evidence from which a reasonable juror
could find that all of the elements of claim 13 are present
in the HeRO Graft. See Odetics, Inc. v. Storage Tech. Corp.,
185 F.3d 1259, 1268 (Fed. Cir. 1999) (“Thus a claim limita-
tion written in § 112[(f)] form, like all claim limitations,
must be met, literally or equivalently, for infringement to
lie.”). He has failed to adduce such evidence with respect
to the “disposed about” limitation, so he cannot prove in-
fringement even if all of the other limitations of his claim
are present in the accused device.
Infringement is an element of induced, contributory,
and willful infringement. See Novartis Pharms. Corp. v.
Eon Labs Mfg., Inc., 363 F.3d 1306, 1308 (Fed. Cir. 2004);
Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 94 (2016).
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KHAN v. MERIT MEDICAL SYSTEMS, INC. 9
Therefore, Khan’s inability to prove infringement likewise
dooms his other claims.
We have considered Mr. Khan’s other arguments and
find them unpersuasive. We affirm the district court’s
grant of Merit Medical’s motion for summary judgment of
non-infringement.
AFFIRMED
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