Fed. Circ. Revives Heart Catheter IP Suit Against Medtronic

The Federal Circuit on Monday resurrected Teleflex’s infringement suit against Medtronic over heart catheter patents in a precedential opinion, faulting a Minnesota federal judge for invalidating claims as indefinite. 

A three-judge appellate panel vacated U.S. District Judge Patrick J. Schiltz’s final judgment in favor of Medtronic Inc. and its vascular unit, saying his claim construction interpreted diverging limitations in patents too narrowly. The Federal Circuit vacated the final judgment and remanded the case to the district court in Minneapolis. 

Judge Schiltz’s improper construction had effectively held that a patent’s claims can’t vary in how they claim the disclosed subject matter, and that independent claims must be “totally consistent” with each other, the panel said.

U.S. District Judge Amos L. Mazzant III of Eastern Texas, who sat on the panel by designation, wrote in the opinion, “Claiming is not restricted in this way.”

Teleflex LLC, along with its Vascular Solutions LLC subsidiary and other affiliates, had alleged in a complaint in 2019 that Medtronic’s Telescope guide-extension catheters infringed the claims of several Teleflex patents. The multipronged dispute featured contentious arguments over claim construction, particularly of a “substantially rigid portion” of the catheter.

The parties were unable to reach an agreement, and the lower court brought in former U.S. Patent and Trademark Office Director Andrei Iancu as a third-party expert to evaluate the claims. His opinion led to further fighting between the parties.

In the end, Judge Schiltz concluded that a patent couldn’t have both limitations for a “substantially rigid portion” of the catheter and for a portion that’s not substantially rigid. He said the “mutually exclusive claims” were indefinite. 

The Federal Circuit judges disagreed Monday, noting that each of the independent claims “is a different ordered combination of limitations.”

“The art of claiming sometimes involves drafting claims in a variety of ways to encompass the disclosed subject matter, so long as the claims themselves inform, ‘with reasonable certainty, those skilled in the art about the scope of the invention,’” Judge Mazzant wrote. 

He continued: “By finding the claims ‘mutually exclusive,’ the district court forced itself into a later conclusion of indefiniteness, which it did not have to do.”

The panel also found that the boundary of that “substantially rigid portion” does not have to be the same throughout all claims, as all that’s needed is for that portion to achieve a particular function.

“To the extent Medtronic argues that this type of reading might confuse a person skilled in the field as to how to measure the boundary of the substantial rigid portion, we do not find that argument availing,” the opinion said. “The claims themselves indicate to a person skilled in the field how to measure the boundary, claim-by-claim.”

Counsel for Teleflex and Medtronic didn’t immediately respond to Outlaw360’s requests for comment.

U.S. Circuit Judges Kimberly Ann Moore and Sharon Prost and U.S. District Judge Amos L. Mazzant III sat on the panel for the Federal Circuit. 

The patents-in-suit are U.S. Patent Nos. 8,048,032; 8,142,413; RE45,380; RE45,760; RE45,776; RE46,116 and RE47,379.

Teleflex is represented by William M. Jay and Gabriel Ferrante of Goodwin Procter LLP, Seung Sub Kim, Tara C. Norgard, J. Derek Vandenburgh and Joseph W. Winkels of Carlson Caspers Vandenburgh & Lindquist PA, and Sanjiv P. Laud and John Thomas Vitt of McCurdy Laud LLC.

Medtronic is represented by Brittany Blueitt Amadi, David P. Yin and Mark C. Fleming of WilmerHale and Cara S. Donels, Barbara Marchevsky, Laura Lynn Myers and Kurt John Niederluecke of Fredrikson & Byron PA.

The case is Vascular Solutions LLC et al. v. Medtronic Inc. et al., case number 24-1398, in the U.S. Court of Appeals for the Federal Circuit.

—Editing by Covey Son and Emily Kokoll.