U.S. Court of Appeals for the Federal Circuit

Docket: 23-2153 

Opinion Date: July 18, 2025

Colibri Heart Valve LLC owns U.S. Patent No. 8,900,294, which claims a method for implanting an artificial heart valve that allows for partial deployment and recapture if positioning is incorrect. Colibri sued Medtronic CoreValve, LLC, alleging that Medtronic induced surgeons to infringe this patent by using Medtronic’s products. The patent initially included two independent claims for partial deployment by pushing and retracting, but the claim for retracting was canceled during prosecution.

In the United States District Court for the Central District of California, Medtronic argued that their product used partial deployment by retracting, not pushing, and that Colibri’s claim of infringement under the doctrine of equivalents was barred by prosecution history estoppel. The jury found in favor of Colibri, awarding over $106 million in damages. Medtronic’s motions for judgment as a matter of law (JMOL) on the grounds of prosecution history estoppel were denied by the district court.

The United States Court of Appeals for the Federal Circuit reviewed the case and concluded that prosecution history estoppel barred Colibri’s claim under the doctrine of equivalents. The court determined that Colibri’s cancellation of the claim for partial deployment by retracting during prosecution, coupled with the close relationship between the canceled and retained claims, precluded Colibri from asserting that Medtronic’s method was equivalent to the claimed method. Consequently, the Federal Circuit reversed the district court’s denial of JMOL of noninfringement, rendering the remaining issues on appeal moot.