Federal Circuit hands victory to Snyders over heart valve patent

The US Court of Appeals for the Federal Circuit has held that claims of a patent covering an artificial heart valve were erroneously held to be unpatentable by the US Patent Trial and Appeal Board (PTAB), in a blow to a medical device company owned by Abbott Laboratories.

The Federal Circuit delivered the decision on Tuesday, October 5.

In 2016, Snyders Heart Valve accused Abbott-owned St Jude Medical of infringing two patents covering “artificial heart valves for repairing damaged heart valves”: US patent number 6,540,782 (the ‘782 patent), granted in 2003, and US patent number 6,821,297 (the ‘297 patent), granted in 2004.

In response to the lawsuit, which was filed at the US District Court for the Eastern District of Texas, St Jude instigated four inter partes reviews (IPR) alleging that claims of the two patents are unpatentable.

Tuesday’s decision centres on one of those IPRs, in which St Jude had challenged multiple claims of the ‘297 patent.

St Jude had argued that the claims were invalid due to prior art. The Abbott-owned company relied on earlier-filed US patent number 5,855,601, which disclosed an artificial heart valve and a method and device for installing it.

In 2019, PTAB agreed that the challenged claims of the ‘297 patent were unpatentable, some because of anticipation and others due to obviousness.

Snyders appealed against the decision. Initially, the Federal Circuit vacated the PTAB’s decision and remanded the matter back to the US Patent and Trademark Office (USPTO) in compliance with its own decision in Arthrex v Smith & Nephew  (2019).

However, the US Government filed a writ of  certiorari in the Arthrex matter and, earlier this year, the Supreme Court gave judgment in that case.

A key aspect of the Supreme Court’s ruling was that the final written decisions of administrative patent judges in PTAB determinations may be subject to review by the director of the USPTO.

Accordingly, since the Arthrex decision, the Federal Circuit has remanded many matters back to the USPTO for review by the director.

However, in this matter, the Federal Circuit had already made a determination in Snyders’ appeal relating to the ‘782 patent in October 2020. The medical device company asked that it takes the same approach to the challenged claims of the ‘297 patent, in light of the two patents covering the same invention.

St Jude’s argued that the matter should instead be remanded to the USPTO for reconsideration in light of the Federal Circuit’s decision regarding the ‘782 patent.

On Tuesday, the Federal Circuit sided with Snyders and found that, on this occasion, the “appropriate course of action” is to reverse the PTAB’s decision regarding the ‘297 patent in the same way that it had reversed the PTAB’s decision regarding the ‘782 patent.

“The claims and written descriptions in the two patents are the same in all relevant aspects”, the Federal Circuit said. Therefore, for the same reasons that the claims of the ‘782 patent were upheld by the Federal Circuit, the claims of the ‘297 patent should similarly be upheld.

With the ‘782 patent, the Federal Circuit held that the PTAB had relied on an erroneous claim construction regarding the size and shape of the frame for insertion into a damaged heart valve.

The claim construction applied by the PTAB was incorrect because it covered frames sized and shaped for installation with the native valve removed, rather than only with the native valve in place. This was the case with both the ‘782 patent and the ‘297 patent.

Therefore, the Federal Circuit reversed the PTAB’s finding of unpatentability with respect to the challenged claims of the ‘297 patent.

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