DCT
6:20-cv-00973
TMT Systems Inc v. Medtronic Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: TMT Systems, Inc. (Delaware)
- Defendant: Medtronic, Inc. (Minnesota)
- Plaintiff’s Counsel: Capshaw DeRieux, LLP
- Case Identification: 6:20-cv-00973, W.D. Tex., 10/16/2020
- Venue Allegations: Plaintiff alleges venue is proper because Medtronic has committed acts of infringement in the district and maintains a "regular and established place of business" at its San Antonio Facility, where it employs staff, conducts business functions, and holds itself out to the public as a Medtronic location.
- Core Dispute: Plaintiff alleges that Defendant’s Endurant line of stent grafts, used to treat abdominal aortic aneurysms, infringes a patent related to an "M-stent" anchoring technology.
- Technical Context: The technology relates to endovascular stent grafts, which are medical devices used in minimally invasive procedures to repair weakened or bulging arterial walls, known as aneurysms.
- Key Procedural History: The complaint alleges that the inventor, Dr. Sarac, disclosed his M-stent designs under a confidentiality agreement to an engineer who was subsequently hired by Medtronic and allegedly used the designs to develop the accused products. The complaint further alleges that Medtronic was on notice of the patent-in-suit as early as July 2008. Subsequent to the filing of this complaint, an inter partes review (IPR) was instituted against the patent-in-suit (IPR2021-01532). The resulting IPR certificate, issued November 13, 2024, confirmed the patentability of claims 1, 2, 4, 10, 11, and 26, but does not list the asserted claim 23 as having survived the proceeding.
Case Timeline
| Date | Event |
|---|---|
| 2002-07-22 | '393 Patent Priority Date (Provisional Application) |
| 2006-09-05 | '393 Patent Issue Date |
| 2008-07-11 | Alleged date Medtronic received notice of '393 Patent |
| 2008-01-01 | Endurant stent graft launched in Europe (date approximate) |
| 2010-01-01 | Endurant stent graft received FDA approval (date approximate) |
| 2012-01-01 | Endurant II stent graft received FDA approval (date approximate) |
| 2014-01-01 | Endurant IIs stent graft received FDA approval (date approximate) |
| 2020-10-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,101,393 - Percutaneous Endovascular Apparatus for Repair of Aneurysms and Arterial Blockages
The Invention Explained
- Problem Addressed: The patent's background section notes that earlier endovascular grafts had proposed various attachment devices, but none were "ideally suited." (U.S. Patent No. 7,101,393, col. 1:52-54). The complaint elaborates that prior art stents had issues with anchoring that could lead to leaks and had a "limited ability to conform to the specific needs of patients," particularly those with non-standard anatomies. (Compl. ¶17).
- The Patented Solution: The invention proposes an endovascular apparatus with an improved expandable attachment device. This device is formed from "a plurality of telescoping arms" that are joined to create an expandable ring. ('393 Patent, col. 2:1-3). These arms, which can function like "nested tubes" or an "accordion," allow the device to be collapsed into a small profile for delivery through a catheter and then expanded at the treatment site to exert radial force, securing the graft against the vessel wall. ('393 Patent, col. 2:37-44; col. 5:19-20). The arms can be arranged in specific patterns, such as an "M configuration," to enhance performance. ('393 Patent, col. 5:36-40).
- Technical Importance: This design sought to provide a more secure and adaptable seal against the vessel wall, thereby reducing blood leaks around the graft, a critical factor for successful long-term treatment of aneurysms. (Compl. ¶18; '393 Patent, col. 1:58-60).
Key Claims at a Glance
- The complaint asserts independent claim 23. (Compl. ¶28).
- The essential elements of independent claim 23 are:
- a tubular sleeve having a cranial end, a first caudal branch, and a second caudal branch; and
- first, second, and third expandable attachment devices attached to the cranial end, the first caudal branch, and the second caudal branch of the tubular sleeve, respectively, to hold the sleeve open and secure it to a lumen wall, where the devices are expandable and each comprise:
- a plurality of telescoping arms, operatively connected to form a perimeter of variable length, and further operatively coupled at an angle so that four telescoping arms form the shape of an M configuration when viewed from within a plane defined by the perimeter.
- The complaint states that its infringement examples are preliminary and reserves the right to allege infringement of other claims. (Compl. ¶32).
III. The Accused Instrumentality
Product Identification
- The Endurant, Endurant II, and Endurant IIs stent grafts. (Compl. ¶1).
Functionality and Market Context
- The accused products are bifurcated stent grafts indicated for the "endovascular treatment of infrarenal abdominal aortic or aortoiliac aneurysms." (Compl. ¶33). The complaint alleges that the products incorporate Plaintiff's patented technology, which Medtronic's marketing materials describe as "M-shaped proximal stents" that provide "[o]ptimal seal and fixation" by ensuring "wall apposition and minimiz[ing] in-folding." (Compl. ¶24, ¶38). The complaint alleges the Endurant line has been highly successful, capturing over fifty percent of the U.S. market for such devices. (Compl. ¶24).
IV. Analysis of Infringement Allegations
'393 Patent Infringement Allegations
| Claim Element (from Independent Claim 23) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a tubular sleeve having a cranial end, a first caudal branch, and a second caudal branch | The accused Endurant II stent graft is alleged to include a tubular sleeve (green) with an upper cranial end (blue) and lower first and second caudal branches (purple). An annotated figure from Medtronic's materials is provided to illustrate this structure. (Compl. p. 14). | ¶34 | col. 3:58-60 |
| first, second, and third expandable attachment devices attached to the cranial end, the first caudal branch, and the second caudal branch of the tubular sleeve, respectively... being expandable from a first state to a second state | The accused product allegedly includes three such expandable attachment devices. The complaint includes screenshots from a Medtronic animation showing the device being deployed and expanding from a compressed first state to an expanded second state inside an artery. (Compl. p. 15). | ¶35, ¶36 | col. 4:1-10 |
| a plurality of telescoping arms, the arms being operatively connected to one another so as to form a perimeter of variable length | The "M-shaped proximal stents" of the accused products are alleged to be "telescoping arms." The complaint claims they include four arms that can expand and contract "in the manner of an accordion" to form a perimeter of variable length. | ¶38 | col. 5:12-16 |
| and the arms further being operatively coupled to one another at an angle so that four telescoping arms form the shape of an M configuration when viewed from within a plane defined by the perimeter... | The complaint alleges the arms of the accused product's stent are coupled at an angle to form an M configuration. This is supported by annotated images of the Endurant II stent graft where the M-shape is highlighted in red. (Compl. p. 17). | ¶39 | col. 9:17-23 |
Identified Points of Contention
- Scope Questions: The central dispute may concern the definition of "telescoping arms." The complaint alleges the accused product's "M-shaped proximal stents" expand and contract "in the manner of an accordion." (Compl. ¶38). The question for the court will be whether this accordion-like mechanism falls within the scope of "telescoping arms" as defined in the patent, which describes embodiments like "nested tubes." ('393 Patent, col. 5:19-20).
- Technical Questions: A factual question will be whether the structure and operation of the accused stent wires correspond to the claim limitations. For example, the court will examine whether the wires are "operatively connected to one another so as to form a perimeter of variable length" in the specific manner required by the claim, or if there is a functional difference between the accused design and the patented invention.
V. Key Claim Terms for Construction
- The Term: "telescoping arms"
- Context and Importance: This term is the core of the asserted inventive concept in claim 23. The infringement analysis will likely turn on whether the accused product's wire-form "M-shaped stents" meet this definition. Practitioners may focus on this term because the patent's description and the accused product's apparent structure present a potential mismatch.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent abstract describes "telescoping segments similar to the telescoping segments of a presentation pointer," and the specification notes that, alternatively, "each telescoping arm may function like an accordion." ('393 Patent, Abstract; col. 2:40-42). Plaintiff may argue this language supports construing "telescoping" to encompass any structure that controllably extends and retracts along an axis, including the accordion-like function alleged in the complaint.
- Evidence for a Narrower Interpretation: The specification also provides more specific examples, stating that a telescoping arm "is made up of a plurality of segments" that "may be in slideable contact with one another and may be incrementally sized so as to fit within one another," referred to as "nested tubes." ('393 Patent, col. 5:15-20; Fig. 4C). Defendant may argue that this language limits the term to structures with distinct, sliding, nested components, and excludes a unitary, bent-wire "accordion" structure.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under § 271(b), stating Medtronic had knowledge of the '393 Patent since at least July 2008 and intentionally encouraged infringement by "providing documentation and other information to customers such as health care providers and physicians instructing them to use the Accused Products in an infringing manner." (Compl. ¶29). It also alleges contributory infringement under § 271(c), asserting the accused products are a material part of the invention, have no substantial non-infringing use, and are especially adapted for infringement. (Compl. ¶30).
- Willful Infringement: Willfulness is alleged based on Medtronic’s purported pre-suit knowledge of the '393 patent since 2008 and its alleged "knowing usurpation" of the invention through its hiring of an engineer previously exposed to the technology under a confidentiality agreement. (Compl. ¶21-26, ¶41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "telescoping arms," which the patent illustrates with examples like "nested tubes," be construed broadly enough to read on the accused product's "M-shaped proximal stents," which the complaint itself describes as functioning "in the manner of an accordion"?
- A dispositive threshold issue will be the procedural impact of the IPR: given that the sole asserted claim in this litigation, claim 23, is not listed among the claims found patentable in the IPR certificate issued for the '393 patent, a key question is whether the plaintiff's case has a viable legal basis to proceed.