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Inventor Uses Abstention to Avoid Getting “Screwed”

The US Court of Appeals for the Federal Circuit affirmed the dismissal of a declaratory judgment complaint related to patent validity under the federal abstention doctrine because the issue had been decided in state court. Warsaw Orthopedic, Medtronic Inc., et al. v. Rick C. Sasso, M.D., Case No. 19-1583 (Fed. Cir. Oct. 14, 2020) (Newman, J.).

Warsaw Orthopedic and Medtronic (collectively, Medtronic) filed a declaratory judgment complaint against Sasso, a surgeon and inventor. The district court dismissed the complaint, without prejudice, under the doctrine of federal court “abstention” because of a concurrent lawsuit in state court between the same parties and concerning the same dispute. As described by the respective plaintiffs, the state court case is “a contract case for payment of patent rights,” and the federal case is “a patent case in which payment requires valid patents.”

In 1999, Medtronic and Sasso entered into an agreement that provided for quarterly royalty payments based on Medtronic’s sales of medical devices using Sasso’s inventions related to screw delivery systems and methods. The agreement does not terminate until “the last to expire of the patents included in Intellectual Property Rights, or if no patent application(s) issue into a patent having valid claim coverage of the Medical Device, then seven (7) years from the Date of First Sale of the Medical Device.” Two patents issued for the invention at issue, and Medtronic made royalty payments from 2002 to 2018.

In 2014, Sasso filed a lawsuit in Indiana state court for breach of contract and damages because Medtronic was not paying royalties on all relevant devices. Medtronic argued that Sasso was seeking royalties for products not covered by a valid patent claim. The district court granted Sasso’s motion for summary judgment on the term of the agreement and on patent validity as a defense to payment, stating that the monies to be paid under the agreement depend on the issuance of the patents and their expiration—not their validity. At trial, the jury found that Medtronic had breached the agreement and awarded damages. Medtronic filed an appeal to the Indiana Court of Appeals.

Medtronic also filed a declaratory judgment action in Indiana district court. Medtronic alleged that no valid claim of the patents covered the Medtronic products for which Sasso sought royalties. The district court dismissed the action without prejudice, stating that the state court had already entered judgment in favor of Sasso and no order from the district court could undo that judgment—only the Indiana Court of Appeals and the Indiana Supreme Court have authority to review that judgment.

Medtronic appealed to the Federal Circuit, asserting that the district court’s “abstention” was an abuse of discretion. Medtronic argued that because the agreement required valid claim coverage, and patent validity is within exclusive federal jurisdiction, the district court had an obligation to receive and resolve the dispute.

The Federal Circuit found that the district court had reasonably relied on the Supreme Court’s Wilton/Brillhart abstention doctrine (1995), which provides support for district courts to dismiss or stay claims seeking declaratory relief, even though they have subject matter jurisdiction over such claims. The Federal Circuit also found that federal courts reasonably should abstain from exercising declaratory jurisdiction when issues “can better be settled in [a] proceeding pending in . . . state court.”

Medtronic argued that the district court should have relied on the Supreme Court’s Colorado River standard (1976), which provides that a federal proceeding should not be stayed in favor of a state proceeding when the federal proceeding includes a claim over which federal courts have exclusive jurisdiction. The Federal Circuit noted that the facts in this case warranted the more flexible Wilton/Brillhart standard because there had already been a trial in state court that was now on appeal at the state court of appeals. Given the entirety of the circumstances, the Federal Circuit concluded that the district court “exercised common-sense accommodation of judgment.”

© 2020 McDermott Will & EmeryNational Law Review, Volume X, Number 296



About this Author

Jodi Benassi, Intellectual Property Litigator, McDermott Will Emery Law Firm

Jodi Benassi* focuses her practice on intellectual property litigation.

Jodi has drafted and negotiated technology and commercial contracts; analyzed non-practicing entities (NPE), NPE litigation andinter partes reviews to reduce risks and costs of patent litigation; and assessed startups and individual inventors for preemptive patent purchase visibility. She previously held several executive positions in the technology sector where she managed corporate expansions into the Latin America and European cable and telecommunication markets...