A US appeals court has overturned a $106.5m patent infringement verdict against medtech giant Medtronic in a dispute with a smaller rival over the method used to implant artificial heart valves.
The US Court of Appeals for the Federal Circuit (Federal Circuit) ruled on 18 July that Colorado-based Colibri Heart Valve should not have been allowed to rely on the doctrine of equivalents to press its claim against Medtronic, which was advised by Jones Day, because Colibri had changed the scope of the patent during the approval process.
The case centred on whether the guidance Medtronic issued to surgeons for implanting its valves infringed Colibri’s patented method.
Colibri had originally applied to patent two implantation methods, one that involved pushing the replacement valve out of a delivery sheath and another that involved retracting the sheath to expose the valve.
However, it cancelled the retracting method application after it was rejected by the examiner for lack of sufficient written description.
During the trial, Colibri had abandoned its literal infringement claim and relied solely on the doctrine of equivalents. It argued that Medtronic’s method, which combined pushing and retracting to position the heart valve, was “equivalent” to the patented method.
However, the Federal Circuit concluded that the cancellation of the retracting method application precluded Colibri from relying on the doctrine of equivalents.
It therefore reversed the district court’s denial of judgment as a matter of law of non-infringement.
The Jones Day team was led by Washington DC-based partner Greg Castanias and also included appellate court patent expert Jennifer Swize and associates Joe Farley and Kelly Holt Rodriguez.
Medtronic CoreValve was also represented by DLA Piper trial lawyers Mark D Fowler and Stanley Joseph Panikowski.
Colibri Heart Valve was represented by Jeffrey A Lamken from litigation law firm MoloLamken, in Washington DC. He was supported by associate Walter H. Hawes IV, and appellate litigators Michael Gregory Pattillo Jr and Catherine Martinez.
Colibri’s counsel also included Chicago-based Bartlit Beck partners Steven Derringer, Meg E Fasulo, Matthew R Ford and Katherine E Rhoades, and Denver-based partners John Hughes and Taylor James Kelson.
This was the second win for Jones Day at the Federal Circuit last week.
On 17 July, it obtained reversal of a $20m design patent and trademark infringement verdict for John Ngan and four companies of which he is the sole owner: Top Brand, E Star, Flying Star and Sky Creations.
The companies sell hooded sweatshirts and wearable blankets. Appellee Cozy Comfort had sued them for trademark and design patent infringement. The Federal Circuit, however, found that the jury’s verdict on infringement was not supported by substantial evidence.
Both cases were led and argued by Castanias.
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