A federal magistrate judge in Texas last week recommended dismissal for a lawsuit brought by a physician inventor against Abbott (NYSE:ABT) subsidiarySt. Jude Medical over transcatheter valve replacement technology.
Dr. Robert Snyder, founder of Snyders Heart Valve, filed suits two years ago in the U.S. District Court for Eastern Texas, claiming that both St. Jude and cross-town rival Medtronic (NYSE:MDT) used technologies covered by his patents for an artificial heart valve and delivery system called the Funnel valve, according to court documents. The lawsuits, which were later consolidated for pre-trial discovery, allege that St. Jude’s Portico valve and Medtronic CoreValve and CoreValve Evolut implants infringe a pair of his patents.
St. Jude moved to have the case dismissed for lack of venue, arguing that it’s business isn’t based in Texas and that none of the allegedly infringing behavior occurred there. Judge Amos Mazzant disagreed, ruling in May 2017 that “plaintiff makes a prima facie showing that defendants would be subject to personal jurisdiction in this district. Accordingly, venue is proper,” notwithstanding the U.S. Supreme Court agreeing to review a case that could have some bearing (co-defendant Medtronic and Snyders Heart Valve reached a settlement in June 2017, according to the documents).
Last week Magistrate Judge Kimberly Priest Johnson recommended that Mazzant dismiss the case against St. Jude, arguing that the alleged violations in Texas were solely for clinical trials of its Portico valve and that no commercial sales were made there. Safe harbor protects companies that infringe a patent in the course seeking FDA approval; it expires once the device is put on the market.
“[T]he court finds all acts of infringement in the Eastern District of Texas are solely clinical, and therefore, the … safe harbor applies despite purported nonexempt activity in Minnesota. Since there are no material factual questions on challenged activities remaining, summary judgment on the safe harbor issue is proper. Furthermore, no amount of additional discovery will change that fact,” Johnson wrote.
Mazzant later stayed the case pending his ruling on Johnson’s recommendation for dismissal.