Boston Scientific Corp. has agreed to acquire Devoro Medical Inc. in a deal expected to close this year. Boston Scientific previously held a 16% equity stake in Devoro Medical and now agrees to acquire the remaining 84% stake for $269M. Boston Scientific also agrees to pay up to $67M more if Devoro Medical clears certain regulatory and clinical milestones.
OMEGA PATENTS, LLC v. CALAMP CORPORATION
Before Prost, Dyk, and Hughes. Appeal from the United States District Court for the Middle District of Florida.
Summary: Licensing policies that allow use of any or all of a bundle of patents for a single per-unit fee are not a proper basis for establishing royalties without apportionment.
Baxter International Inc. (“Baxter”) has agreed to acquire Hillrom for $10.5 billion ($156 per share) in a deal expected to close in 2022. After assumption of debt, the total enterprise value of the deal is approximately $12.4 billion. The deal had been rumored for about a month before it was announced.
The orthopedic industry traditionally sees significant levels of intellectual property litigation activity, and this year has been no different. One source of this activity comes from Conformis who has continued to assert patents directed towards surgical planning and patient specific instruments and implants. In 2021, Conformis filed three new complaints, settled one case, and continued another litigation. These cases have involved various companies, including DePuy Synthes, Exactech, Bodycad, Wright Medical, and Medacta.
PIANO FACTORY GROUP, INC. v. SCHIEDMAYER CELESTA GMBH
Before Prost, Bryson, and Stoll. Appeal from the Trademark Trial and Appeal Board.
Summary: The appointments of TTAB judges do not share the constitutional defect that the Supreme Court remedied for PTAB judges in Arthrex.
BELCHER PHARMACEUTICALS v. HOSPIRA, INC.
Before Reyna, Taranto, and Stoll. Appeal from the District of Delaware.
Summary: A patentee committed inequitable conduct by advancing an argument during patent prosecution that contradicted the patentee’s prior arguments and evidence submitted to the FDA.
LUBBY HOLDINGS LLC v. CHUNG
Before Dyk, Newman, and Wallach. Appeal from the Central District of California.
Summary: Specific charges of infringement by a specific accused product are required to provide actual notice under 35 U.S.C. § 287 and thereby support an award of pre-suit damages.
Can certain specific medical device details remain company know-how or protected trade secrets even if patents are pursued on the medical device? Consider the Seventh Circuit’s commentary in its August 9, 2021 decision upholding a preliminary injunction in the Life Spine, Inc. v. Aegis Spine, Inc. case. The preliminary injunction prohibits Aegis from selling or marketing its competing AccelFix product (shown below, right) until the case is resolved on the merits.
MLC INTELLECTUAL PROPERTY, LLC v. MICRON TECHNOLOGY, INC.
Before Newman, Reyna, and Stoll. Appeal from the United States District Court for the Northern District of California.
Summary: When relying upon lump sum payments in a prior license agreement to support a reasonable royalty rate, explanation as to how the royalty rate is derived from the lump sum payment is needed, the theory and underlying facts/documents should be disclosed before expert discovery, and apportionment between patented and non-patented features must be considered absent reliance on a comparable license.
JUNO THERAPEUTICS, INC. v. KITE PHARMA, INC.
Before Moore, Prost, and O’Malley. Appeal from the United States District Court for the Central District of California.
Summary: Knowledge of a common general structure and the disclosure of two representative species is insufficient to support the written description of a functionally-claimed genus when the claimed function results from specific structures and the specification does not provide distinguishing characteristics for structures that achieve the claimed function and those that do not.
