Cancellation of a Closely Related Claim During Prosecution Can Trigger Prosecution History Estoppel

Written by:Daniel Kiang and Nefi R. Oliva

COLIBRI HEART VALVE LLC v. MEDTRONIC COREVALVE, LLC

Before Taranto, Hughes, and Stoll. Appeal from the United States District Court for the Central District of California.

Summary: The Federal Circuit reversed a $106 million infringement verdict, holding that Colibri’s doctrine-of-equivalents arguments were barred by prosecution history estoppel because it cancelled a related claim during prosecution.

Colibri sued Medtronic, a manufacturer of replacement heart valves, for infringement of a patented method for implanting an artificial heart valve that gives the surgeon a second chance to get the positioning of the valve right.  During prosecution of its patent, Colibri pursued two closely related independent claims reciting the do-over method.  The first claim recited “pushing” the valve out from the delivery device, while the second claim covered “retracting” an outer sheath to expose the valve.  The examiner rejected the “retracting” claim for lack of written description and Colibri cancelled it.

In the district court, Medtronic argued that its product deployed the valve by retracting, not pushing.  Colibri responded that the “pushing” claim covered Medtronic’s procedure under the doctrine of equivalents.  The jury agreed and awarded Colibri more than $106 million in damages.  Medtronic moved for judgment as a matter of law (JMOL) on the grounds that Colibri’s doctrine-of-equivalents theory was barred by prosecution history estoppel.  The district court denied the JMOL motion because the “pushing” and “retracting” claims were separate independent claims and Colibri did not amend the “pushing” limitation during prosecution.

The Federal Circuit reversed the district court’s denial of JMOL.  The court explained that when evaluating prosecution history estoppel, a court considers closely related claims, not just the amended claim.  Because of the close substantive relationship between the “pushing” claim and the “retracting” claim, Colibri’s cancellation of the “retracting” claim gave rise to prosecution history estoppel as to the “pushing” claim.

Editor: Sean Murray