IP Law Daily, PATENT—E.D. Wis.: Patent infringement case against medical technology company Biotronik will proceed, (Nov 12, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The district court ruled that judgment on the pleadings was inappropriate because the Federal Circuit’s decisions on patent law are binding on its resolution of the dispute.

In a patent infringement dispute regarding cardiac/medical device technology and related patents, the U.S. District Court for the Eastern District of Wisconsin denied the defendants’ motion for judgment on the pleadings because they made the same argument the Federal Circuit rejected in Aristocrat Technologies v. International Game Technology. The argument was for invalidity under 35 U.S.C. § 102 based on the patent owner’s disclosure and a break in the chain of priority (Biotronik Inc. v. Niazi Patent Holdings, LLC, No. 2:25-cv-01739-JPS (E.D. Wis. Nov. 6, 2026)).

Niazi Patent Holdings, LLC (NPH) owns all rights, title, and interest in and under the U.S. Patent No. RE50,170 (the ’170 patent) titled “Summation anodal pacing to complement multisite stimulation.” The ’170 patent is a reissue of U.S. Patent No. 8,838,237 (the ’237 patent). The ’237 patent was filed as U.S. App. No. 13/053,965 (the ’965 application) on March 22, 2011. The ’965 application claims priority as a continuation in part of U.S. App. No. 12/899,244 (the ’244 application), which was filed on October 6, 2010. The ’244 application in turn claims priority to U.S. Provisional App. 61/272,563 (the ’563 provisional application). The ’244 application became abandoned on December 23, 2010, when NPH failed to respond to the notice of missing parts issued on October 22, 2010. Since the ’244 application was abandoned before the ’965 application’s filing date, Biotronik Inc. and Biotronik SE & Co. KG (collectively, Biotronik) argued to NPH that the ’170 patent was invalid at a meet and confer in December 2025. In response, NPH petitioned the Patent and Trademark Office (PTO) for revival of the ’244 application under 37 C.F.R. § 1.137, which the PTO granted. Biotronik then filed an action seeking a declaratory judgment of noninfringement of the ’170 patent. NPH counterclaimed, alleging infringement of the ’170 patent. Biotronik moved for a judgment on the pleadings under Federal Rule of Civil Procedure 12(c), arguing that the chain of priority of the ’170 patent was broken and the reissue patent is invalid.

The district court noted that NPH maintained that the ’170 patent is valid, while Biotronik argued that the ’170 patent’s chain of priority to the ’563 application was broken because it was filed after NPH abandoned the ’244 non-provisional application, that the PTO exceeded its authority in reviving continuity, and that NPH’s prior disclosures invalidate the ’170 patent. NPH argued that Aristocrat Technologies Australia PTY Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir. 2008) (Aristocrat), forecloses arguing improper revival as a defense to patent infringement, even when couched in an argument under 35 U.S.C. § 102.

The district court found that Biotronik pursued the same attempt at invalidation as the alleged infringer in Aristocrat: invalidity under 35 U.S.C. § 102 based on the patent owner’s disclosure and a break in the chain of priority. The district court noted that while Biotronik suggested that the Federal Circuit did not make its decision based on public use under 35 U.S.C. § 102(b), it failed to explain why a public use is sufficiently dissimilar from a foreign patent application to escape the purview of this precedent. The district court also noted that the Federal Circuit’s statutory interpretation is controlling, and as the Federal Circuit has held that a break in the chain of priority is not a valid defense to patent infringement under 35 U.S.C. § 282, the court must reject this argument. Further, Biotronik’s emphasis that its challenge is procedural, not substantive, does not allow it to avoid Aristocrat.

Additionally, Biotronik’s contention that the PTO acted ultra vires, or without authority lacked merit because the PTO is vested with authority to revive abandoned patents. The district court also found that Biotronik cited Avanir Pharms., Inc. v. Actavis S. Atl. LLC, 987 F. Supp. 2d 504 (D. Del. 2013) where the court invalidated the PTO’s grant of a revival petition. Moreover, the case was inapposite because the Avanir court based its holding on the lack of a terminal disclaimer. A terminal disclaimer was required there to prevent the patentee from enjoying a priority date of June 1992 for a patent set to run until January 2016, well beyond the 17 years it was allowed as a pre-General Agreement on Tariffs and Trade filing. However, there was no missing terminal disclaimer at issue here, and the ’170 patent’s balance of disclosure and monopoly is already struck by the nature of its continuation from the ’244 application, which would set its expiration on or about October 6, 2030.

Therefore, the district court determined that because Biotronik makes essentially the same argument as the Federal Circuit rejected in Aristocrat, its motion for judgment on the pleadings must be denied. In addition, as the district court found that it may not invalidate the PTO’s revival, which legally bridges the alleged co-pendency gap, the district court declined to reach the issue of factual co-pendency. Accordingly, Biotronik’s motion for judgment on the pleadings was denied.

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