Thursday, June 5, 2014

Edwards Lifesciences and Medtronic Sign Patent Licensing Agreement

Case Filed: Nov 17, 2009

Case Closed: May 29, 2014

Court: Delaware District Court

Judge: Gregory M. Sleet

Case Summary:
Irvine, California-based Edwards Lifesciences filed a suit against Medtronic for infringing a U.S patent relating to a valve prosthesis, which permits implantation without surgical intervention in the body and by using a catheter technique. CoreValve and Vascular, wholly-owned subsidiaries of Medtronic are the other named defendants in the suit.

The patent at issue was: US7618446 entitled ‘Valve prosthesis for implantation in the body and a catheter for implanting such valve prosthesis,’ duly issued by USPTO on Nov 17, 2009 and expired[i] on May 18, 2010. Edwards Lifesciences AG was the last assignee[ii] of the ‘446 patent (source: MaxVal’s Assignment Database.) The patent claims collapsible and expandable tissue value prosthesis that replaces human heart valves using minimally-invasive catheterization technique.

As in Complaint:
Medtronic, Medtronic CoreValve and Medtronic Vascular infringe by manufacturing and commercializing heart valve prostheses covered by the claims of the ‘446 patent including the ReValving system. The accused product is allegedly sold in European countries and outside US. Plaintiff claimed that the infringement was willful and deliberate and to render this case to be exceptional and enjoin the defendants from infringing their patent.

A second amended complaint was filed, which specifically stated defendants commercialize “Medtronic CoreValve Percutaneous System,” “CoreValve transcatheter aortic valve system,” and/or the “ReValving” system. It also included two additional patents: US5411552 and US6582462, reading the same as the ‘446 patent.

Settlement Agreement:
According to Medtronic’s press release, under the terms of the cross-license settlement agreement, the parties will dismiss all of the pending litigation matters. Medtronic will make Edwards a one-time payment of $750 million and ongoing royalty payments through April 2022 based on a percentage of CoreValve sales, of no less than $40 million annually.

The parties have also agreed that neither party will sue the other for patent matters anywhere in the world for eight years in the field of aortic and all other transcatheter heart valves. Neither Medtronic nor Edwards have admitted that their products infringe any patents or that any patents are invalid.

Accordingly, the court granted voluntary dismissal of all claims and defenses between the parties with prejudice. Each party will bear its attorney fees, costs and expenses.

See 1:09-cv-00873 for more details. To get alerts on cases filed/closed, subscribe to our Litigation Alerts.

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[i] Expected expiration date. Patent Term Estimator is a free web-based tool that automatically calculates patent terms and expiration dates for U.S. utility patents.
[ii] MaxVal offers Patent Assignment Alert service where subscribers receive email alerts when assignments relating to target applications, patents or entities of interest are recorded.

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