US medical device manufacturer Boston Scientific has successfully defended a patent for heart valves before the European Patent Office. The Boards of Appeal upheld patent EP 2 749 254 to a limited extent.
27 February 2019 by Konstanze Richter
In May 2017, an anonymous opponent represented by the Munich patent law firm Lang & Tomerius withdrew its opposition to the Boston Scientific patent for unknown reasons. Another opponent, US manufacturer Edwards Lifesciences, withdrew its opposition claim after reaching a settlement with Boston Scientific in January 2019.
Of the original three opponents to file opposition suits against Boston Scientific, Irish medical device manufacturer Medtronic was the only remaining opponent in proceedings against Boston Scientific at the EPO.
Boston Scientific and Edwards Lifesciences had previously been locked in a fierce dispute over the EP 254 patent now upheld by the EPO. At the end of October 2015, Boston Scientific filed an infringement suit against Edwards Lifesciences at Düsseldorf Regional Court.
After the Court of First Instance ruled in favour of the plaintiff and confirmed an infringement, the defendant appealed to the Higher Regional Court Düsseldorf. Edwards Lifesciences also filed an entitlement action at the Regional Court Munich. As a result, the Higher Regional Court Düsseldorf initially suspended the appeal proceedings on the question of infringement. However, in the suspension order the judge confirmed the decision of the first instance.
At the same time, opposition proceedings against the patent were being conducted at the EPO. In late 2017, the EPO published its decision to maintain the patent in a limited form. Edwards Lifesciences appealed against this.
Like all other infringement and opposition proceedings this dispute then ended with the global settlement between Boston Scientific and Edwards Lifesciences.
While Edwards Lifesciences and the remaining opponent Medtronic have also clashed in court in the past, there have been no previous legal disputes between Medtronic and Boston Scientific.
Boston Scientific retained its long-standing advisor for the opposition proceedings, Peterreins Schley, which had previously assisted the US company in various infringement suits.
Partner Peterreins, who is qualified as both attorney-at-law and patent attorney, advised the client during his time at Fish & Richardson.
Medtronic also instructed its regular counsel. Mixed law firm Hoffmann Eitle has been managing a partial portfolio for the medical technology company for years.
In addition to the prosecution work conducted by its patent attorneys, the firm’s litigators also regularly advise the company on infringement proceedings, such as the suit against Edwards Lifesciences in 2014.
For Boston Scientific
Peterreins Schley (Munich): Frank Peterreins; patent attorneys: Jan-Malte Schley, Matthias Traut
Hoffmann Eitle: Mark Jones (Munich): Anne Schön, Jeremias Wollschlaeger (both patent attorneys)
EPO Boards of Appeal, Munich Haar