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

Background

Snyders brought a patent-infringement action against St. Jude concerning U.S. Patent Nos. 6,821,297 and 6,540,782, which relate to artificial heart-valve devices. St. Jude later filed four petitions for inter partes review, a process in which the Patent Trial and Appeal Board examines whether patent claims are patentable.

The Patent Trial and Appeal Board initially found seven asserted claims unpatentable: four claims of the ’782 Patent and three claims of the ’297 Patent. In response, Snyders said in a joint report and during a scheduling conference that it was willing to proceed only on the confirmed claims to expedite trial. Snyders also offered to file a covenant not to sue on the seven claims if St. Jude agreed to proceed to trial and did not pursue an appeal-related stay.

The court later allowed pretrial proceedings to continue but stayed the trial while the parties’ appeals of the patent-review decisions proceeded. The Federal Circuit subsequently revived the seven claims. It reversed the invalidation of the ’782 Patent claims on the merits and remanded the ’297 Patent claims because of the appointment problem involving the administrative patent judges who decided the review.

Whether Snyders Waived the Revived Claims

St. Jude argued that Snyders had abandoned the seven claims. Snyders argued that its offers were conditional and that the required conditions did not occur because St. Jude pursued an appeal-related stay and the case did not proceed to trial.

The court explained that a party may abandon patent claims without filing a formal motion, obtaining a court order, or entering a stipulation. The question was therefore whether Snyders had clearly and unequivocally waived its right to assert the claims.

The court found no such waiver. Snyders’s offers were conditioned on proceeding to trial without the relevant delay, and that condition was not met. The court also concluded that its own decision allowing pretrial proceedings to continue while staying the trial did not accept Snyders’s conditional offer. Statements in a later joint report and an earlier court order indicating that no ’297 Patent claims remained were, in context, ambiguous descriptions of the claims’ status at that time, not clear and permanent waivers.

The court therefore granted Snyders’s motion regarding the revived patent claims and permitted Snyders to reassert the seven claims.

Motion to Stay

St. Jude asked the court to stay the proceedings while the ’297 Patent review continued on remand to the Patent Trial and Appeal Board, including any appeals. The court considered whether a stay would prejudice Snyders, simplify the case, and fit the stage of the litigation.

The court found that the prejudice factor was neutral or slightly favored Snyders. Although monetary damages could compensate Snyders because it did not produce or sell products, the inventor was elderly and in poor health, creating a potential risk that the loss of testimony could prejudice Snyders. The court also noted that a stay could be lengthy.

The court found that a stay would not significantly simplify the case. Of the 21 asserted claims, 18 had been upheld and were not subject to further inter partes review; only three ’297 Patent claims remained in the remanded review. The advanced stage of the case also weighed against a stay because discovery was complete, claim-construction hearings had occurred, expert reports had been filed, and motions concerning expert testimony and summary judgment had been fully briefed.

Disposition

The court granted Plaintiffs’ Motion Regarding the Revived Patent Claims and denied Defendants’ Motion to Stay. The opinion did not decide whether St. Jude ultimately infringed the revived claims.