IP Law Daily, PATENT—Fed. Cir.: Denial of preliminary injunction affirmed in prosthetic heart valve testing device dispute, (Mar 28, 2024)

By Kevin M. Finson

A preliminary injunction was not appropriate because there were substantial questions about the validity of the asserted patent and therefore the “likelihood of success on the merits” element was not met.

A California district court did not abuse its discretion in denying a patent owner’s request for a preliminary injunction against a competitor in the heart valve testing device business, the U.S. Court of Appeals for the Federal Circuit has held. The defendant had raised substantial questions about the validity of the asserted patent so the district court acted within its discretion in finding that the plaintiff failed to establish a likelihood of success on the merits at this stage in the proceeding (Biomedical Device Consultants & Laboratories Of Colorado, LLC v. Vivitro Labs, Inc., March 28, 2024, Lourie, A.).

Biomedical Device Consultants & Laboratories of Colorado, LLC (BDC) was the owner of U.S. Patent No. 9,237,935 (the ’935 patent), which claimed accelerated rate fatigue testing devices for prosthetic valves. BDC brought suit for infringement against ViVitro Labs, Inc. (ViVitro), a competitor in the manufacture of heart valve durability testing devices and sought a preliminary injunction. The district court denied the preliminary injunction, finding that BDC had failed to establish a likelihood of success on the merits due to substantial questions of both patent validity and infringement. BDC filed an interlocutory appeal.

Validity. ViVitro presented an expert declaration which asserted that one prior art reference, an operating manual for a heart valve durability testing device, anticipated four of the patent’s claims and that same reference in combination with a Chinese patent rendered the remaining claims obvious. BDC argued that the operating manual did not anticipate any of the claims because the capacitance tank in the reference was not in fluid communication with a return chamber, the capacitance tank was not able to store test fluid when the system was under compression, and the capacitance tank was not physically capable of operating at an accelerated pulse rate as required by the patent. On each of these points the court held that the district court was within its rights to credit the testimony of ViVitro’s expert, who testified that a person skilled in the art would understand the prior art reference as practicing all of the elements of the asserted claims.

Because the court found substantial questions existed as to the validity of the patent, the district court did not abuse its discretion in denying the preliminary injunction. As this was sufficient to decide the case, the court affirmed without reaching the issue of infringement.

The Case is No. 23-2393.

Attorneys: Gregory S. Tamkin (Dorsey & Whitney LLP) for Biomedical Device Consultants & Laboratories of Colorado, LLC. Warren James Thomas (Meunier Carlin & Curfman LLC) for Vivitro Labs, Inc.

Companies: Biomedical Device Consultants & Laboratories of Colorado, LLC; Vivitro Labs, Inc.

Cases: Patent FedCirNews CaliforniaNews