US medical device manufacturers Nevro and Boston Scientific have ended their long-running patent dispute in the US and Germany. The parties agreed on a cross-licence for their paresthesia-free therapy products.
5 August 2022 by Mathieu Klos
According to a press release, California-based Nevro will grant Massachusetts-based Boston Scientific a worldwide, non-exclusive, non-transferable licence to practice paresthesia-free therapy, while also promising not to sue for any features embodied in any current Boston Scientific products for frequencies below 1,500 Hz. In return, Boston Scientific will also grant Nevro a worldwide, non-exclusive, non-transferable licence under Boston Scientific’s asserted patent families and a covenant not to sue.
Under the settlement, Boston Scientific will pay Nevro $85 million. However, a US court awarded Boston Scientific $20 million in damages in 2021 because Nevro infringed two of its competitor’s patents.
Boston Scientific offers its technology as part of its “Precision” system, Nevro competes with its “Senza” system. The devices relieve chronic pain. The treatment involves stimulating the spinal cord with high frequencies. The companies emphasise the advantage of the treatment is that it does not cause sensory disturbances in patients.
According to Reuters, Boston Scientific made $909 million last year from neuromodulation products including its Precision line. Meanwhile, Nevro made more than $386 million from its products. The news agency cites filings with the US Securities and Exchange Commission.
The settlement also puts an end to all legal disputes between Nevro and Boston Scientific. The two competitors have been suing each other over patents in the US since 2016.
In 2018, the dispute then spilled over into Germany. Boston Scientific filed an entitlement action (case ID: 7 O 14659/18) with the Munich Regional Court.
According to JUVE Patent information, the case is said to have concerned the surrender of around 30 European patents from Nevro to Boston Scientific. Munich Regional Court initially rejected this. Eventually, the dispute landed at the Higher Regional Court, was referred back to the Regional Court and then returned to the second instance (case ID: 6 U 1771/22). Munich Higher Regional Court had not issued a ruling at the time of the settlement.
It is not known why Boston Scientific demanded the transfer of the property rights in Europe. According to press reports, however, the company claimed in the US proceedings “that Nevro has hired away dozens of former Boston Scientific employees since its earliest days as a company to steal its trade secrets”.
The two companies also recently faced off before the European Patent Office, attacking each other’s patents in EPO oppositions. There were no lawsuits in other European countries.
According to JUVE Patent information, the dispute with Boston Scientific was the first time Bird & Bird had acted for Nevro in court. The team led by Düsseldorf partner Oliver Jüngst is known in the market primarily for pharmaceutical cases. It is currently representing CureVac against BioNTech in the first lawsuit concerning a Covid 19 vaccine in Germany.
Nevertheless, Bird & Bird’s patent team is no stranger to the medical technology sector. Munich partner Boris Kreye, for example, is intensively litigating for Edwards Lifesciences against Meril in a heart valve dispute.
Boston Scientific and Vossius & Partner, on the other hand, have a long-standing relationship. The patent attorneys file patents with the EPO extensively. The litigation team is currently conducting further proceedings against Cook Medical in Germany. However, the medical device manufacturer has also retained other law firms for patent litigation in the past.
Overall, the Vossius litigation team is very active in medical-device litigation. ResMed, for example, is another major client the team regularly litigates for, such as in an extensive series of lawsuits against Fisher & Paykel. This ended in a settlement in 2019. Then, as now, the Vossius team led by Thure Schubert faced the Bird & Bird team led by Oliver Jüngst.
According to JUVE Patent information, the US proceedings for Boston Scientific were led by the law firms Akin Gump Strauss Hauer & Feld and Arnold Porter Kaye Scholer. On the opposing side, Sidley Austin, Sterne Kessler Goldstein & Fox and Morris Nichols Arsht & Tunnell were active for Nevro.
For Boston Scientific
Vossius & Partner (Munich): Thure Schubert (lead lawyers), Arnold Asmussen, (lead patent attorneys), Christoph Eisenmann (both patent attorneys); counsel: Philipp Widera
In-house (US): Matthew Jorgenson (Senior Managing Counsel, IP), Todd Messal (Senior Managing Counsel Litigation), Ali Atefi
Bird & Bird (Düsseldorf): Oliver Jan Jüngst, Daniela Kinkeldey (patent attorney, Munich); associate: Alexander Dahlmanns
In-house (San Francisco): Peter Socarras (Deputy General Counsel)
Regional Court Munich, 7th Civil Chamber
Matthias Zigann (presiding judge)
Higher Regional Court Munich, 6th Senate
Lars Meinhardt (presiding judge)