Medtronic, Abbott, Both Have Something To Appeal

Posted on | November 17, 2008 | No Comments

2009-1014, -1038 Advanced Cardiovascular v. Medtronic
D/DE 98-80-SLR
Judge Sue Robinson

Both sides appeal from the verdicts, orders and judgment from Judge Sue Robinson's court finding that Medtronic infringes the so-called Lau patents (including 6,432,133), there was no inequitable conduct in procuring the Lau patents, but also declining to enter a permanent injunction.  The case involved various expandable, bare-metal stents.

This case has had a little bit of everything, including two previous trips to the CAFC, party realignment, and an arbitration.  But hey, its only been pending 10.5 years.

Medtronic, the original plaintiff, sued defendants claiming infringement of various stent patents and asserting some state law claims.  Defendants counterclaimed, asserting the Lau patents against Medtronic.  The court granted summary judgment of non-infringement to defendants, a finding affirmed on appeal (2005-1280).  The parties were then re-alligned for trial of the Lau patents.

A jury trial in 2005 found that Medtronic infringed the Lau patents, which were also found valid.  A 2005 bench trial addressed Medtronic's inequitable conduct claim, that certain prior art references were not disclosed.  In 2007 the court denied Medtronic's post-trial motions and found no inequitable conduct.  An arbitration was then conducted regarding whether Medtronic had a license with respect to one of its products, with the arbitrator concluding that it did not.

Medtronic tried to appeal before (2007-1365), but it was dismissed as premature pending determination of Abbott's request for a permanent injunction—which the court just denied.

Injunction

In denying the injunction, the court found that monetary damages would suffice and that Abbott had not shown irreparable harm.  On the former, the court noted that Abbott had been willing to license others in the same market, thus showing a willingness "to forego its exclusive rights for some manner of compensation." 

The court also noted that, despite ACS (Advanced Cardiovascular System, now part of Abbott) losing significant market share after Medtronic entered the fray, other competitors clouded the issue and it "could not identify any specific customers it had lost, or stands to lose, directly as a result of Medtronic's continued sales of infringing stents."

The court further relied on the public's strong interest in maintaining a diversity of stents and on some doctor's preference for Medtronic's stents versus ACS's.

More reading:

Counsel:

Abbott: Richard Layton & Finger (Wilmington, DE); Finnegan Henderson Farabow Garrett & Dunner (DC).

Medtronic: Morris, Nichols, Arsht & Tunnell (Wilmington, DE); McDermott Will & Emory (DC; Irvin, CA)

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