Medtronic’s New Intervening Rights Assertion Falls Short, for Now

Scott Daniels | December 19, 2011

The recent split panel decision of the CAFC in Marine Polymer – holding that a patentee’s argument in reexamination “effectively narrowing” the scope of a claim could create absolute statutory intervening rights erasing damages for acts occurring before the issue date of the reexamination certificate – has caused a stir in the patent world.  An argument made by the accused infringer Medtronic in Voda v. Medtronic (Case No. 09-cv-95), and not expressly rejected by the trial court, would extend the sweep of intervening rights even further.

Voda’s patent claimed a method for extending a catheter through the aorta, including the step of “advancing the catheter body distal end through the aortic arch.”  In an earlier law suit, won handsomely by Voda, its expert witness testified regarding this limitation, perhaps implying that the limitation should be construed broadly, i.e., that Voda’s claims would encompass not only procedures of a so-called “femoral approach,” but also procedures using “a radial approach.”  Voda later sued Medtronic in the present case, and Medtronic replied, inter alia, by filing requests for reexamination four times.  The result of those reexaminations was the PTO’s confirmation of the validity of all relevant claims.  Specifically, the examiner confirmed the claims because of “clarification that advancement of the catheter through the aorta included the entire aortic arch,” i.e., construing the claims to cover only procedures with the “femoral approach.” 

Medtronic seized on the reexamination examiner’s comment, and combined it with the testimony of the Voda expert in the first law suit, to argue that Voda had broadly construed the claims in its first law suit and had later “effectively narrowed” them in the reexaminations.  In other words, Voda had expanded the scope of the claims in the first litigation through the testimony of its expert and subsequently narrowed (“clarified”) that scope in the reexaminations.  Accordingly, Medtronic asserted that under §§ 35 U.S.C. 252, 307(b), it was entitled to absolute intervening rights because the scope of the claims had been “effectively narrowed” by Voda’s argument in reexamination, citing Marine Polymer.  

The trial judge did not reject the theoretical basis for Medtronic’s argument.  Instead, it applied principles of “judicial estoppel” to find that Voda was not legally bound to the claim construction urged by its expert witness in the first litigation.  “There is nothing in the cited testimony or briefing that clearly reflects a claim by plaintiff that the brachial or radial approach infringed the method claims … whether the radial or brachial approach infringed … was not an issue in” Voda’s first litigation.  Since Voda was not estopped or otherwise bound by its expert’s testimony, Medtronic could not establish that Voda’s claims were later “narrowed” in the reexamination.  Accordingly, Medtronic was not entitled to any Marine Polymer-type intervening rights.

Implicit in the trial court’s ruling is an acknowledgment that, had Voda succeeded in establishing a broad claim construction in its first litigation, judicial estoppel might have applied and intervening rights created in the reexamination.  More generally, the message for practitioners it that the full impact of Marine Polymer on infringement litigation is not yet known. 

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