Is A Cash Offset The Same As Money Received? Could Be

G. David Jang, M.D. v. Boston Scientific Scimed, Inc., et al.

Addressing whether a cash offset to a settlement payment was the equivalent of a monetary gain for purposes of profit sharing under a patent assignment, the U.S. Court of Appeals for the Third Circuit reversed the district court's dismissal of the case and allowed it to proceed to discovery, finding that a cash offset was in fact a monetary gain. G. David Jang, M.D. v. Boston Scientific Scimed, Inc., et al., Case Nos. 12-3434 (3rd Cir., Sept. 5, 2013) (Sloviter, J.).

Dr. Jang received a patent for a coronary stent invention. He then assigned the patent to Boston Scientific in an agreement that required it to share profits with Jang, including any damages recovered from third party infringers. In 2010 Boston Scientific settled a claim against Cordis Corporation for infringement of the patent in combination with a claim Cordis had against Boston Scientific. The settlement resulted in Boston Scientific