CAFC Reverses Dismissal of Medtronic's Patent Infringement Counterclaims, Finds Standing Intact Under A.L.M.

"Medtronic Ireland owns U.S. Patent Nos. 8,845,629 and 11,801,085, which cover systems and methods for renal neuromodulation, a technique that applies thermal energy to nerve fibers connected to the kidneys to treat hypertension. Medtronic Ireland's Symplicity Spyral renal denervation (RDN) system competes directly with Recor Medical's Paradise System, which also uses renal neuromodulation."

"During discovery, Medtronic Ireland produced a 2023 Exclusive License Agreement (ELA) under which it had granted Medtronic Vascular Galway Unlimited Company an exclusive license to use, make, import, offer for sale, and sell designated "Products" covered by the patents. Recor Medical then moved to dismiss Medtronic Ireland's counterclaims, arguing that the transfer of rights to Medtronic Galway stripped Medtronic Ireland of the exclusionary rights necessary for constitutional standing."

"The district court agreed with Recor Medical and dismissed Medtronic Ireland's counterclaims without prejudice. While relying on CAFC's prior decision in Morrow v. ... the court concluded that Medtronic Ireland lacked the exclusionary rights required to establish Article III standing after licensing certain patent rights to its affiliate."

"The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in Recor Medical, Inc. v. Medtronic Ireland Manufacturing Unlimited Co., reversing a ruling from the United States District Court for the Northern District of California and holding that Medtronic Ireland Manufacturing Unlimited Co. retained sufficient exclusionary rights to satisfy Article III constitutional standing, even after licensing certain patent rights to an affiliated entity."

Medtronic Ireland owns patents covering renal neuromodulation systems and methods that apply thermal energy to kidney-connected nerve fibers to treat hypertension. Recor Medical sued Medtronic Ireland seeking a declaration of non-infringement and invalidity, while Medtronic Ireland asserted counterclaims for infringement of both patents. During discovery, Medtronic Ireland produced a 2023 exclusive license agreement granting an affiliated entity exclusive rights to use, make, import, offer for sale, and sell designated products covered by the patents. Recor Medical moved to dismiss the counterclaims, arguing the licensing removed the exclusionary rights needed for constitutional standing. The district court dismissed the counterclaims without prejudice, but the Federal Circuit reversed, holding Medtronic Ireland retained sufficient exclusionary rights for Article III standing after the licensing.

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