Snyders Heart Valve LLC v. St. Jude Medical S.C., Inc.

Background

Snyders Heart Valve LLC sued St. Jude Medical, Cardiology Division, Inc., St. Jude Medical S.C., Inc., and St. Jude Medical, LLC, alleging infringement of U.S. Patent Nos. 6,821,297 and 6,540,782, which concern transcatheter aortic valve replacement. The case was originally filed in the Eastern District of Texas and was later transferred to the District of Minnesota after the Texas court found that Texas was an improper venue.

The Texas court had previously construed 22 disputed patent terms. The district court adopted those constructions and denied requests to reconsider them. St. Jude later petitioned for inter partes review of claims in the ’782 Patent. The Patent Trial and Appeal Board issued final written decisions in May 2019. Based on the earlier claim constructions and the Board’s decisions, the parties agreed that Snyders’ infringement claims concerning the ’297 Patent were extinguished, leaving infringement claims concerning the ’782 Patent.

Claim Construction

Claim construction is the court’s interpretation of the meaning and scope of patent claims. The court held that law-of-the-case and reconsideration principles applied to the Texas court’s earlier constructions. It would revisit those constructions only when new evidence, including the Board’s decisions, required it or when the earlier construction was clearly erroneous.

For “manipulator” in claims 28 and 29 of the ’782 Patent, the court rejected St. Jude’s proposed limitation that a manipulator could not be used with a guidewire. The court found no sufficient support for that limitation in the patent’s intrinsic evidence and construed “manipulator” according to its plain meaning.

For terms describing a valve element’s convex upstream side and concave downstream side, the court adopted the construction agreed to by the parties and used by the Board: the overall shape of the entire relevant side of the flexible valve element must be convex or concave, respectively.

For “band,” the court adopted St. Jude’s proposed construction: “a structure generally in the shape of a closed strip or ring that is not integrated with the frame and not a sleeve.” The court concluded that this construction accounted for the earlier Texas ruling, the Board’s treatment of a sleeve-like structure, and the parties’ agreement.

The court declined to revisit the prior constructions of “valve element,” “flaps,” “anchor,” “central portion located between the plurality of peripheral anchors,” “flexibly resilient” frame, “along a centerline,” and “releasable fastener.” Neither party showed that those prior constructions were clearly erroneous. The order therefore adopted the new constructions stated in the memorandum and otherwise adopted the Texas court’s prior constructions for the ’782 and ’297 Patents.

Partial Summary Judgment on Invalidity Defenses

Snyders moved for partial summary judgment under 35 U.S.C. § 315(e)(2). That statute prevents an inter partes review petitioner from asserting in a later patent case that a claim is invalid on a ground the petitioner raised or reasonably could have raised during the review.

The court explained that the relevant requirements were a final written decision by the Board, invalidity grounds based on anticipation or obviousness under 35 U.S.C. §§ 102 or 103, and grounds that were raised or reasonably could have been raised during the review. The parties disputed only the third requirement.

Applying the “skilled searcher” standard, the court held that St. Jude reasonably could have raised the defenses at issue. Before filing its review petitions, St. Jude had identified the relevant patents and printed publications in its invalidity contentions. St. Jude did not identify other patents or publications that it sought to use, and the Board had instituted review on all grounds included in the petitions.

The court rejected St. Jude’s argument that a prior Federal Circuit decision required a different result and rejected the argument that Snyders’ motion was premature. The court granted Snyders’ Motion for Partial Summary Judgment, and St. Jude was precluded from raising anticipation and obviousness defenses under § 315(e)(2).

Order

The court did not immediately rule on the parties’ earlier stipulated joint motion for partial summary judgment. Because that motion was based on the earlier claim construction, the parties were ordered to notify the court within 14 days whether they still wanted the motion granted. If they did not respond within that period, the joint motion would be granted.