May 31, 2023Legal
Fresh From the Bench: Latest Precedential Patent Case


Medtronic, Inc. et al. v. Teleflex Innovations S.A.R.L., Appeal Nos. 2021-2356, -2358, -2361, -2363, and -2365 (Fed. Cir. May 24, 2023)

In this week’s Case of the Week, a split panel of the Federal Circuit considered issues pertaining to reduction to practice and inventor corroboration as pertained to various related pre-AIA patents owned by appellee Teleflex and directed to guide extension catheters for use in coronary arteries.

In the underlying inter partes reviews, the Patent Trial and Appeal Board had found that petitioner Medtronic’s primary asserted prior art patent (“Itou”) was not prior art because Teleflex’s claimed invention had been actually reduced to practice prior to Itou’s effective filing date of September 23, 2005, and that Medtronic had therefore failed to show that the claims were unpatentable. On appeal, Medtronic argued that the Board had not correctly identified the invention’s intended purpose for reduction-to-practice purposes, that it should have required comparative testing to show that the invention worked for that purpose, and that the inventors’ reduction-to-practice testimony was insufficiently corroborated. A majority of the Federal Circuit panel affirmed.




OneSubsea IP UK Ltd. v. FMC Techs., Inc., Appeal No. 22-1099 (Fed. Cir. May 23, 2023)

In an appeal from a district court’s denial of attorneys’ fees against appellee OneSubsea, the Federal Circuit affirmed. The eight-year-old case involved patents in the subsea oil and gas exploration and extraction industry. Both parties asserted a number of patents against each other, totaling well over 100 claims. The case had a long and tortuous history, including inter partes review proceedings and appeals. Eventually, the district court granted summary judgment of non-infringement in favor of FMC based on its Markman decision concerning the meaning of a particular claim term. FMC then moved for fees pursuant to Section 285. The case was thereafter transferred to a different judge (the case’s third), who denied the motion. The new judge held that the case was not objectively baseless even after the Markman decision. The district court also held that OneSubsea did not engage in litigation misconduct, and that any alleged misconduct should be excused “[g]iven the large number of patents, claims, and counterclaims,” “the three-year stay during PTAB proceedings, and additional procedural complexities.”

The Federal Circuit affirmed that decision, finding no abuse of discretion. In addition to agreeing with the district court judge’s analysis, the Court also rejected FMC’s argument that no deference should be given to the district court decision because the judge who decided the sanctions motion had no prior history with the case. The Court cited a long line of cases adhering to the abuse of discretion standard even where a successor judge is called upon to assess the parties’ litigation conduct throughout the case.

The opinion can be found here.



Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.

Jason A. Wrubleski, Shareholder

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