Case: 23-2329 Document: 69 Page: 1 Filed: 07/16/2024

NOTE: This disposition is nonprecedential.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 ______________________

NAZIR KHAN, Burr Ridge, IL, pro se.

BRENT P. LORIMER, Lorimer Ip, PLLC, Midvale, UT, for defendant-appellee. Also represented by DAVID R. TODD, THOMAS R. VUKSINICK, Workman Nydegger, Salt Lake City, UT. ______________________ Case: 23-2329 Document: 69 Page: 2 Filed: 07/16/2024

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Before MOORE, Chief Judge, LOURIE and STARK, Circuit Judges. PER 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. Case: 23-2329 Document: 69 Page: 3 Filed: 07/16/2024

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.” Case: 23-2329 Document: 69 Page: 4 Filed: 07/16/2024

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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 Case: 23-2329 Document: 69 Page: 5 Filed: 07/16/2024

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). Case: 23-2329 Document: 69 Page: 6 Filed: 07/16/2024

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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 Case: 23-2329 Document: 69 Page: 7 Filed: 07/16/2024

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.”). Case: 23-2329 Document: 69 Page: 8 Filed: 07/16/2024

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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). Case: 23-2329 Document: 69 Page: 9 Filed: 07/16/2024

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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