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26 October 2021AmericasMuireann Bolger

St Jude recovers partial attorney fees in heart catheter case

St Jude Medical will be able to claw back some of the attorney fees and expenses it incurred defending a suit filed by Niazi Licensing Corporation (NLC) in a dispute over a patent covering a heart catheter.

US District Judge Wilhemina handed down the order on Monday, October 25, at the  US District Court for the District of Minnesota.

NLC sued St Jude in November 2017, alleging that the medical device maker indirectly infringed its patent, US Number 6,638,268, which covers a catheter system that can be inserted into the coronary sinus of the heart. The ’268 patent also claims methods of using the catheter system.

During the same year,  Abbott Laboratories  acquired St Jude in a $25 billion deal. In March, the court  concluded that NLC failed to present evidence to prove two essential elements of its patent-infringement claim—namely, that at least one person directly infringed the patented method and that St Jude knowingly induced infringement and possessed specific intent to encourage another’s infringement.

Accordingly, the court denied NLC’s motion for summary judgment of infringement and granted St Jude’s motion for summary judgment of non-infringement.

St Jude then moved to recoup for attorneys’ fees and costs, arguing that NLC knew or should have known that its infringement claims lacked merit.

But in this week’s order, Judge Wright ruled that St Jude could only claim back fees and expenses incurred after October 2019.

She wrote that St Jude had not sufficiently demonstrated that NLC failed to conduct a reasonable factual inquiry before filing its lawsuit in 2017.

“St Jude does not address NLC’s claim-construction positions, let alone demonstrate that those positions were so unreasonable as to warrant sanctions.

“On this record, St Jude has not established that NLC lacked a reasonable, good-faith basis to infer that infringement had occurred when NLC commenced this lawsuit or at any time before this court issued its claim construction order.”

But she concluded that NLC engaged in bad-faith efforts to prolong this litigation after October 2019 and that this case is “exceptional” because it is distinguishable from others “with respect to the substantive strength of NLC’s litigation position” and the unreasonable manner in which NLC litigated this case after that date.

These efforts included repeatedly relying on evidence that had not been disclosed during fact discovery, disregarding the deadlines established in the court’s scheduling order, willfully violating the order striking improper evidence, and advancing unreasonable and meritless arguments, she said.

“NLC persisted in this conduct even after St Jude repeatedly identified deficiencies in the merits of NLC’s case and warned NLC that St Jude would seek attorneys’ fees if NLC continued to prolong this case,” concluded Judge Wright.

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More on this story

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