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Medical Devices

Attorneys at Fish have substantial experience in the medical device arena, including prosecuting patents, leading due diligence teams, and handling significant patent infringement litigation on behalf of our clients.

We offer a broad spectrum of freedom-to-operate services tailored to clients' needs, including comprehensive studies for clearance of products to be released on the market, as well as landscape studies to guide companies so they safely develop medical devices without running afoul of existing patents.

We also provide freedom-to-operate advice and a variety of other services to venture fund clients in connection with potential investments.

Through our Drug and Medical Device Regulatory practice we assist medical device companies with all aspects of FDA and related regulatory work, including preparing and filing marketing authorization applications with the FDA, counseling on FDA test procedures and reporting requirements, import rules, and labeling requirements.

We have prosecuted patents on the following:

Cardiac pacing and defibrillation devices
Catheters (for use in drug delivery, diagnostic applications, and surgical protocols)
Cerebrospinal fluid shunt valves
Devices for magnetic resonance imaging, ultrasound, and X-ray imaging
Dialysis equipment
Drug delivery devices
Endoscopes
Prosthetic organs and joints and orthopedic devices
Surgical instruments (for use in atherectomy and arthroscopy)

Prometheus Laboratories Inc. v. Mayo Collaborative Services, et al.
Fish defended Mayo in an action for patent infringement over metabolite assays for 6-mercaptopurine drugs. We argued and obtained summary judgment of invalidity for the client. Appealed to the Supreme Court, which ruled unanimously in favor of Mayo, finding the Prometheus patents described a law of nature, not patentable under Section 101 of U.S. patent law.

Smith & Nephew Inc. et al v. Arthrex Inc.
Fish represented plaintiffs Smith & Nephew and Dr. John Hayhurst on a patent related to suture anchors used in orthopedic surgery and obtained a $14 million jury verdict for the patentee.

Veeco Instruments Inc. v. Asylum Research Corp.
Fish defended Asylum in a patent litigation and trade secret matter relating to atomic force microscopes. The case settled favorably on eve of trial.

Certain Vein Harvesting Surgical Systems and Components Thereof (337-TA-645)
Represented respondents Terumo and Terumo Cardiovascular Systems in a patent investigation brought by Maquet Cardiovascular. Case settled favorably for client.

Baker v. Med-Vantage Inc.
Fish represented a stockholder and founder of Med-Vantage in an action in the Delaware Court of Chancery seeking to compel a shareholder meeting under Section 211 of the DGCL. Fish obtained a favorable settlement.

Certain Nitrile Gloves (337-TA-608)
Represented respondent Cypress Medical Products against Tillotson in a patent case relating to nitrile rubber gloves for hand protection. Complaint withdrawn as to Cypress Medical Products.

MBO Laboratories, Inc. v. Becton, Dickinson & Co. (474 F.3d 1323)
Fish successfully obtained reversal of much of district court’s claim construction, and obtained a judgment vacating the resulting stipulated summary judgment of non-infringement against client MBO Laboratories. The patent at issue involved hypodermic safety syringes.

MedImmune, Inc. v. Genentech, Inc. (127 S.Ct. 764)
Fish submitted an amicus brief on behalf of 3M, General Electric, Proctor & Gamble, and DuPont.

Implant Innovations, Inc. (Biomet 3i) v. Bicon, LLC, et al.
Fish successfully defended a motion for preliminary injunction on behalf of defendants regarding the trademark NANOTITE for dental implants. A concurrent trademark opposition in the USPTO against the plaintiff 3i, a wholly owned subsidiary of the medical device company Biomet, was resolved in Bicon's favor on the basis of the District Court's findings.

Repligen Corp., et al. v. Bristol-Myers Squibb Co.
Fish represented plaintiffs Repligen and the Regents of the University of Michigan in a patent case relating to the treatment of rheumatoid arthritis and obtained a highly favorable settlement for the client.

Delaware Open MRI Radiology Assocs. P.A. v. Kessler, et al.
Fish was lead counsel in an appraisal proceeding under Section 262 of the DGCL. Fish obtained an 85-page opinion awarding $6 million (twice merger price) to minority shareholder group after appraisal/fiduciary trial challenging squeeze-out merger.

Pacesetter, Inc. v. Cardiac Pacemakers, Inc.
Favorably settled case for Pacesetter after receiving a positive jury verdict of infringement and damages in a patent case in the United States District Court for the District of Minnesota involving cardiac pacemakers and defibrillators.

C.R. Bard v. Medtronic Inc.
Obtained a jury verdict of non-infringement on behalf of Medtronic in a patent case in the United States District Court for the District of Delaware involving an asserted patent related to arterial blood filters used during cardiac surgery.

Mentor Corporation v. American Medical Systems and American Medical Systems v. Mentor Corporation

Represented Mentor Corporation in patent infringement litigation in the District of Minnesota regarding a surgical method of treating female urinary incontinence. Cases settled.

Vartanian v. General Electric Company

Successfully defended General Electric Company (GE) against an appeal to the Court of Appeals for the Federal Circuit brought by Vartanian. The District Court below had ruled in favor of GE in a case involving ownership of a patent on X-ray computed tomography.

Kyphon, Inc. v. Disc-O-Tech Medical Technologies et al.
Obtained a jury verdict in favor of Kyphon in a patent infringement lawsuit in the United States District Court for the District of Delaware involving Kyphon’s patents on a ground-breaking procedure for treating spine fractures caused by osteoporosis. After receipt of the jury’s verdict, the defendants agreed to a consent judgment of infringement, validity, and enforceability, and to the entry of an injunction preventing them from selling the infringing product in the United States. The defendants previously had agreed to cease importation of the infringing product in order to resolve Kyphon’s parallel action before the ITC.

Saunders Group, Inc. v. ComforTrac and Care Rehab and Orthopaedic Products
Represented ComforTrac and Care Rehab and Orthopaedic Products in a case relating to cervical traction devices. Obtained a highly favorable settlement.

Baxter Healthcare, et al. v. Fresenius Medical Care
Represented Fresenius in a case involving peritoneal dialysis systems. After a month long trial, the jury returned a verdict of non-infringement for our client on all patents and all claims. On appeal.

Medtronic v. Abbott and Boston Scientific Corporation
Represented Plaintiff-Intervenor Boston Scientific Corporation in a declaratory judgment action against Medtronic and evYsio Medical Devices ULC. The patents at issue related to cardiovascular stents. Case settled.

Harvinder S. Sandhu, M.D., and Kyphon, Inc. v. Medtronic Sofamor Danek, Inc., et al., and Medtronic, Inc., et al. v. Kyphon, Inc.
Represented Kyphon in a suit in the United States District Court for the Western District of Tennessee alleging that Medtronic Sofamor Danek was infringing patents relating to the treatment of spinal compression fractures. Also defended Kyphon in a patent infringement suit brought by Medtronic in the United States District Court for the Northern District of California alleging patent infringement against Kyphon’s inflatable bone tamps. The suits were settled by Medtronic’s purchase of Kyphon.

Cardiac Sciences v. ZOLL Medical Corp.

Successfully settled a patent infringement case brought by Cardiac Sciences in federal court in California. The firm defeated a motion to preliminarily enjoin ZOLL Medical Corporation from selling its newly introduced AED Plus, an automatic external defibrillator that promises to expand the availability of life-saving defibrillation technology beyond hospitals and ambulance crews. The judge ruled from the bench in ZOLL’s favor at the close of oral argument.

E. Neil Moore v. Medtronic, Inc.
Successfully defended Medtronic in a licensing and patent dispute brought by Moore in the United States District Court for the District of Minnesota involving technology relating to the circuitry used in Medtronic’s implantable cardiac defibrillators to detect accelerated heart rates. The case settled on favorable terms after the district court adopted Medtronics’ proposed patent claim construction following a Markman hearing.

Haemonetics Corporation v. Medtronic, Inc.

Obtained summary judgment of non-infringement for Medtronic in a patent infringement case in the United States District Court for the District of Massachusetts. The case involved two patents relating to blood processing equipment. In addition to granting summary judgment of non-infringement for Medtronic, United States District Court Judge Woodlock also denied as moot the plaintiff ’s motion for a preliminary injunction.

Daniel Brauman v. Mentor Corporation

Represented Mentor Corporation in patent infringement litigation in the Southern District of New York regarding breast implants. Case settled.

Cobe Cardiovascular, Inc., and Sorin Group Deutschland GmbH v. Terumo Cardiovascular Systems Corporation
Favorably settled a patent infringement case involving heart-lung machines brought against our client, Terumo, in the United States District Court for the District of Minnesota.

InteliFUSE, Inc. v. Biomedical Enterprises, Inc.
Represented defendant Biomedical Enterprises, Inc. in patent infringement litigation involving heat-retractable shape memory clamps, such as staples, and their use for closures in surgical applications. Resolved favorably; parties entered into a settlement and license agreement.

Deborah Charms v. Cardiac Pacemakers, Inc., Guidant Corp., and Medtronic, Inc.
Successfully defended Medtronic against an appeal of a summary judgment granted for Medtronic in a patent infringement case brought by Deborah Charms in the United States District Court for the Western District of Texas alleging that her late husband’s patent covered virtually all the implantable cardiac defibrillators sold by Medtronic and CPI/Guidant over a period of seven years. The district court granted summary judgment in favor of the defendants, finding the patent invalid based on anticipation. The Court of Appeals for the Federal Circuit affirmed.

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