The U.S. Court of Appeals for the Federal Circuit has overturned a more than $125 million judgment against Medtronic’s CoreValve unit in a patent infringement case brought by Colibri Heart Valve LLC. The decision, issued on Friday, ruled that changes made during the patent examination process prevent a finding that Medtronic infringed the patent.
In a precedential opinion, the Federal Circuit granted Medtronic a judgment of noninfringement, reversing the earlier decision by U.S. District Judge David O. Carter that denied Medtronic’s motion to dismiss the case following a 2023 jury trial.
The original jury verdict awarded Colibri $106.5 million after finding infringement on a patent covering a method of implanting artificial heart valves. With added prejudgment interest and costs, the final judgment exceeded $125 million. However, the Federal Circuit’s ruling focused on the doctrine of prosecution history estoppel, which bars a patent holder from reclaiming subject matter they relinquished during patent prosecution.
Colibri’s claim that Medtronic’s Evolut replacement heart valves infringed under the doctrine of equivalents was rejected. The court found that Colibri’s cancellation of a related patent claim during prosecution communicated a narrowing of the patent’s scope, barring infringement by Medtronic’s product.
“Medtronic is pleased with the court of appeals’ decision, which affirms our longstanding position that Colibri’s patent infringement claims lacked merit,” Medtronic stated. “Our technology was independently developed, building on our long history of innovation as a pioneer in cardiovascular treatment. Medtronic will continue protecting the innovations that empower physicians and help patients everywhere.”
The patent at issue, U.S. Patent No. 8,900,294, expired in 2022 and describes a method allowing doctors a “do-over opportunity” to reposition an implanted heart valve. The Federal Circuit panel included Judges Richard Taranto, Todd Hughes, and Kara Farnandez Stoll.
Colibri Heart Valve LLC was represented by counsel from MoloLamken LLP and Bartlit Beck LLP. Medtronic’s legal team included attorneys from Jones Day and DLA Piper.
