Terminal Disclaimer Renders Patent Unenforceable

August 26, 2011

Plaintiff, Jan Voda, M.D. ("Dr. Voda"), filed a patent infringement action against Medtronic Inc. ("Medtronic") based on a patent that taught how to use a guide catheter to perform angioplasty of the left coronary artery. After Dr. Voda filed an amended complaint adding an additional patent, Medtronic moved to dismiss the new count based on the new patent pursuant to Fed.R.Civ.P. 12(b)(6) and attached documents that were not referred to in the complaint and that were not central to Dr. Voda's claims. The district court issued an order notifying the parties that it would treat the motion as a motion for summary judgment under Fed.R.Civ.P. 56 and would consider the documents.

Medtronic's motion argued that one of the counts of the amended complaint should be dismissed because the newly added patent was unenforceable in light of the Terminal Disclaimers. The Terminal Disclaimers stated that the '195 patent "shall be enforceable only for and during such period that it" is commonly owned with the '213 patent and another patent (the '625 patent),

The district court found that "[t]his language is in accord with patent regulations, which require that any terminal disclaimer filed to obviate double patenting 'include a provision that any patent granted on that application ... shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.' ... The purpose of the common ownership requirement was to 'prevent harassment of an alleged infringer by multiple parties due to subsequent different ownership of multiple patents granted as the result of filing a terminal disclaimer to overcome a double patenting rejection.'"

The undisputed facts revealed that Dr. Voda had at one time owned all three patents, but had assigned the rights to two of the patents (the '195 and '625 patents) to a company in 2008. In 2010, the company transferred all of its rights in the '195 patent backed to Dr. Voda but did not transfer the rights to the '625 patent. Based on these undisputed facts, Medronic argued that Dr. Voda could not sue to enforce the '195 patent based on the plain meaning of the Terminal Disclaimers. Dr. Voda argued that Medtronic could still be sued for infringement during the time period in which there was joint ownership of the patents.

The district court disagreed. "The Terminal Disclaimers, however, do not speak in terms of ownership during times of infringement; rather, they require common ownership for enforceability. ... To enforce the '195 patent, plaintiff must not only own all three patents for the period he seeks enforcement of the '195 patent, he must also own all three patents during the period he files suit to do so. As it is undisputed that plaintiff does not own the '625 patent, the '195 patent is unenforceable as a matter of law under the plain language of the Terminal Disclaimers."

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The district court's decision is a good reminder--remember to take into account Terminal Disclaimers when transferring or acquiring patents. A failure to acquire all of the patents under a Terminal Disclaimer will render the patents unenforceable.

Voda v. Medtronic, Inc., Case No. CIV-09-95-L (W.D. Okla. Aug. 17, 2011)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.