A federal appeals court overturned a portion of a legal win for St. Jude Medical (NYSE:STJ) yesterday, ruling that a lower court erred in invoking the "safe harbor" provision against double-patenting claims in a patent infringement lawsuit against Access Closure Inc.
Judge Harry Barnes of the U.S. District Court for the Western District of Arkansas ruled in 2011 that Access Closure’s Mynx vascular closure device infringed a trio of St. Jude patents, finding that the safe harbor provision protected St. Jude from Access Closure’s double-patenting charge against STJ.
Barnes later awarded $27.1 million in damages for willful infringement to St. Jude, a ruling the appeals court did not address, according to court documents.
But the Federal Circuit court did find that Barnes was wrong to apply the safe harbor provision, partially reversing his ruling (the appeals court shot down Access Closure’s bid to have the St. Jude patents ruled invalid for obviousness, according to the documents).
In 2010 a jury found that Access violated a St. Jude patent, but also found the patent invalid because of its close similarity to another piece of St. Jude’s intellectual property.
St. Jude argued that federal safe harbor rules apply to the patents, and Judge Barnes ruled in Nov. 2011 that they were protected from Access’ challenge even though the patents were similar enough to be deemed invalid.
Safe harbor rules protect patents that arise for patent applications that cover more than one invention. The U.S. Patent & Trademark Office can force those applications to be split so that each patent covers only 1 invention. In those cases, the split patent is given "safe harbor" from charges of double-patenting.