Minnesota Patent Litigation Wrap-Up — April 2020

Co-Authored by: Ryan Petty, Ph.D.

This post continues our monthly summary of substantive orders in patent litigation in the District of Minnesota.

Vascular Sols. LLC v. Medtronic, Inc., 19-cv-1760 (PJS/TNL), 2020 U.S. Dist. LEXIS 62154, 2020 WL 1809195 (D. Minn. Apr. 9, 2020)

Plaintiffs Vascular Solutions et al. sued Defendants Medtronic and Medtronic Vascular ("Medtronic) over seven reissued patents generally directed to guide extension catheters used in heart procedures. Co-Plaintiff Teleflex sought a preliminary injunction, which Judge Schiltz denied. He began by noting that preliminary injunctions are "extraordinary remedies" and that courts analyze four factors: 1) the likelihood of success on the merits; 2) the threat of irreparable harm if no injunction is granted; 3) the balance of harms; and 4) the public interest.

On likelihood of success, Medtronic argued that most of the asserted claims were anticipated by U.S. Patent No. 7,736,355. The parties disagreed, however, on whether the '355 patent was prior art against one of the patents. Because the patents were filed pre-America Invents Act ("AIA"), the invention date—not the filing date—determines priority for excluding prior art. Teleflex submitted testimony from one of the patent's inventors supporting an earlier invention date. Judge Schiltz noted, however, that corroborating evidence was required to establish the invention date. Teleflex submitted numerous documents as corroboration, but Medtronic pointed out that much of the evidence and testimony was directed to a broader brand of catheter than the specific one at issue. Judge Schiltz then found that Medtronic had raised a substantial question as to whether the '355 patent was prior art, weighing against a preliminary injunction.

Judge Schiltz ultimately held that Teleflex's failure to show its likelihood of success on the merits was sufficient to preclude a preliminary injunction. Nevertheless, he briefly reviewed the remaining factors, finding that all weighed against a preliminary injunction. In particular, Judge Schiltz pointed out that Teleflex's product was "well-known and trusted" in the medical community, which undercut Teleflex's assertion of irreparable harm. Accordingly, he denied Teleflex's motion for a preliminary injunction.

Willis Elec. Co., Ltd. v. Polygroup Macao Ltd., 15-cv-3443 (WMW/KMM), 2020 U.S. Dist. LEXIS 70953 (D. Minn. Apr. 22, 2020)

Defendant Polygroup Macao Ltd. ("Polygroup") moved to compel discovery from plaintiff Willis Elec. Co., Ltd. ("Willis") regarding to the date of invention of an asserted patent family ("the patents"). Willis had withheld the documents by asserting attorney-client privilege, while Polygroup argued that Willis waived the privilege due to a declaration filed at an earlier inter partes review ("IPR"). Willis's patent prosecution attorney submitted the declaration attesting to certain privileged communications that established an invention date of at least as early as May 18, 2010, several months before the provisional patent application for the patents was filed. Because the patents were filed pre-AIA, Willis could swear behind certain prior art by relying on the invention date, not the filing date.

Magistrate Judge Menendez began by noting that "[a] party can waive attorney-client privilege when the client relies on [privileged] communications during legal proceedings." She rejected Willis's argument that the declaration was akin to a privilege log. Instead, the attorney "did more than simply reveal the date of his communications; he also represented that the substance of those communications supported his conclusion" about the earlier invention date. Judge Menendez found that "it would be unfair to allow Willis to offer [the attorney's] opinion about what the privileged communications show regarding conception of the invention and deprive Polygroup of the opportunity to contest Willis's proof." Thus, Willis's reliance on the attorney's declaration at IPR waived attorney-client privilege.

Next, Judge Menendez determined the scope of the waiver, emphasizing that "courts generally construe the scope of waiver narrowly in patent cases." Polygroup argued the waiver should extend to all communications between Willis and the attorney regarding conception and reduction to practice of the patents, while Willis argued the waiver should be limited to a specific email referenced in the privilege log. Judge Menendez found a middle ground was appropriate. Because the attorney's IPR declaration made no reference to reduction to practice, the waiver would be limited to communications between Willis and the attorney only regarding conception of the patents prior to the September 2010 filing date of the provisional application.

Authors: Ryan Petty and Joseph Herriges