Vascular Solutions LLC v. Medtronic, Inc

Background

Vascular Solutions LLC, Teleflex LLC, Teleflex Life Sciences Limited, and Arrow International LLC, collectively called “Teleflex” in the opinion, brought a patent-infringement action against Medtronic, Inc. and Medtronic Vascular, Inc., collectively called “Medtronic.” Teleflex alleged that Medtronic’s Telescope catheter infringed claims in a family of patents directed to guide-extension catheters used in interventional-cardiology procedures. Medtronic counterclaimed for declarations that it did not infringe and that the asserted patent claims were invalid.

Teleflex previously sought a preliminary injunction, which the court denied after finding substantial questions about whether the asserted claims were invalid for lack of written-description support or anticipation by U.S. Patent No. 7,736,355, known as Itou. The court later stayed the case while the Patent Trial and Appeal Board reviewed nearly all of the originally asserted claims. The Board determined that Itou did not qualify as prior art and rejected the written-description argument concerning substitute claims. Medtronic appealed the Board’s decisions to the Federal Circuit. The court then allowed Teleflex to file a second motion for a preliminary injunction.

Legal standard

A preliminary injunction is an extraordinary temporary remedy. The moving party must establish four factors: a likelihood of success on the merits, a threat of irreparable harm without the injunction, a balance of harms between the parties, and consistency with the public interest. In a patent case, the patentee must show that it is likely to prove infringement and that its infringement claim will likely withstand challenges to validity and enforceability. An accused infringer can defeat the motion by raising a substantial question about infringement or validity.

Infringement analysis

For this motion, Teleflex asserted eleven claims across five patents: claims 9, 13, and 18 of Patent No. 8,048,032; claims 25, 36, 37, and 52 of Patent No. RE45,776; claims 9 and 27 of Patent No. RE45,380; claim 44 of Patent No. RE47,379; and claim 4 of Patent No. 8,142,413.

The claims were divided into two groups based on the required location of a side opening. Group One claims required the side opening to be in the “substantially rigid portion.” Group Two claims required the side opening to be distal to that portion, meaning closer to the heart. Medtronic argued that the Telescope’s side opening overlapped with, but was not part of, the substantially rigid portion. Under Medtronic’s interpretation, the Telescope therefore did not satisfy either group of claims.

The dispute turned on claim construction, which is the court’s interpretation of patent-claim terms. Medtronic argued that “substantially rigid portion” meant only the part of the device that acts as a pushrod—the part that transmits the user’s pushing force and advances the rest of the device through the guide catheter. The court found this argument strong, although it did not definitively rule that Medtronic’s construction was correct.

The court noted that Teleflex had previously treated the substantially rigid portion as the pushrod in related claim-construction proceedings. The court also relied on its earlier construction of “substantially rigid” as meaning “rigid enough to allow the device to be advanced within the guide catheter.” The court reasoned that this functional definition supports identifying the substantially rigid portion as the part that performs the pushing, rather than the flexible portion that is pushed.

The court further found that Teleflex’s proposed mapping of the term onto the Telescope was difficult to reconcile. For Group One claims, Teleflex treated the substantially rigid portion as extending beyond the pushrod and past the side opening. For Group Two claims, Teleflex treated that portion as less than the full pushrod so that the side opening would be distal to it. The court found no principled basis for changing the meaning or boundaries of the same claimed portion depending on which claim was being asserted.

Disposition

The court held that Medtronic had raised a substantial question about infringement. Because Teleflex therefore had not established a likelihood of success on the merits, the court concluded that a preliminary injunction could not issue. The court did not address the remaining preliminary-injunction factors.

The order states: “plaintiffs’ motion for a preliminary injunction [ECF No. 325] is DENIED.” Judgment was ordered to be entered accordingly.