Fresh From the Bench: Latest Precedential Patent Cases

CASE OF THE WEEK

Top Brand LLC v. Cozy Comfort Company LLC, Appeal No. 2024-2191 (Fed. Cir. July 17, 2025)

In this week’s Case of the Week, the Court of Appeals for the Federal Circuit held that prosecution history disclaimer applies to design patents. The Court also reversed a jury verdict awarding $3.08 million in damages to Cozy Comfort for trademark infringement. The patent at issue concerns oversized hooded sweatshirts.

Cozy Comfort owns the D’788 patent for an “oversized wearable blanket.” The Examiner initially rejected the application for the D’788 patent as anticipated by a separate patent: the D’900 patent. To overcome this rejection, Cozy Comfort agreed that certain aspects of its design differed from the design in the D’900 patent and disclaimed the significance of specific features such as the shape and placement of the pocket located at the front of the torso and shape of the bottom hem line. Cozy Comfort also owns two registered trademarks for “THE COMFY” mark for use in connection with blanket throws and online retail service featuring blanket throws. In 2020, Top Brand sought a declaratory judgment of noninfringement and invalidity after Cozy Comfort alleged that Top Brand’s hooded sweatshirts and wearable blankets infringed its D’788 patent.

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ALSO THIS WEEK

Colibri Heart Valve LLC v. Medtronic Corevalve, LLC, Appeal No. 2023-2153 (Fed. Cir. July 18, 2025)

This case essentially analyzes two key questions: are a method for implanting a replacement heart valve involving pushing and a similar method involving retraction equivalents for the purpose of determining infringement, and does prosecution history narrowing a claim for both to one only reciting pushing bar a doctrine of equivalents argument?

In this case, Colibri Heart Valve, LLC sued Medtronic Core Valve, LLC a manufacturer of replacement heart valves, in district court for infringement of a claimed method for implanting replacement artificial heart valves. Colibri alleged that Medtronic was inducing surgeons to perform Colibri’s claimed method with Medtronic’s products. Medtronic contended that the accused use of its product involved partial deployment of a valve via a moveable sheath by retracting, not pushing – the patent at issue included no claims expressly reciting deployment by retracting.

At the outset of prosecution of the Colibri patent at issue here, “Method of Controlled Release of Percutaneous Replacement Heart Valve” (U.S. Patent No. 8,900,294), the patent included claims for partial-deployment of a replacement heart valve both via pushing and via retraction. However, during prosecution, Colibri cancelled its claim reciting retraction. As issued, the patent included no claims expressly reciting deployment by retracting. Rather, the ’294 patent was issued only with an independent claim “reciting partial deployment of a replacement heart valve from an outer sheath of a delivery apparatus by pushing.”

In its complaint filed in district court, Colibri claimed that, under the doctrine of equivalents, Medtronic’s method for valve replacement (applying a force to hold a stent in place while retracting a moveable sheath to insert a replacement valve) is equivalent to the claimed partial-deployment method (applying a force to push the stent out of the moveable sheath). The jury agreed, finding that Medtronic had induced infringement and awarded more than $106 million in damages to Colibri. Before and after the verdict, Medtronic sought JMOL on the ground, among others, that Colibri’s doctrine of equivalents claim was barred by prosecution history estoppel. The district court denied the motions.

The Court of Appeals reversed here, concluding that Colibri’s cancellation during prosecution of its claim reciting retraction barred Colibri from asserting infringement under the doctrine of equivalents under the theory that “a combination of applying a pushing force to the pusher member while retracting the moveable sheath (what Medtronic’s device does) is equivalent to, i.e. not substantially different from, “pressing against the pusher member with a force that moves the pusher member outward from the moveable sheath (what [Colibri’s claim] requires.)”

The Court found that Colibri’s cancellation of the claim which recited partial deployment by retraction during prosecution was relevant to what can be claimed as equivalent. “Where the original application once embraced the purported equivalent but the patentee narrowed his claims to obtain the patent or to protect its validity, the patentee cannot assert that he lacked the words to describe the subject matter in question.” The Court relied on Honeywell International Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131 (Fed. Cir. 2004) (en banc.), reciting its holding in that case that “the cancellation of a prior, broader independent claim may give rise to prosecution history estoppel in relation to a narrower claim…”

The Court determined that Medtronic was entitled to JMOL of noninfringement of the ’294 patent, reversing the district court’s denial of such judgment and mooting the remaining aspects of Medtronic’s appeal (i.e. those relating to invalidity, remaining noninfringement arguments, and damages).

The full opinion can be found here.

Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., Appeal Nos. 2023-1864, -1940 (Fed. Cir. July 14, 2025)

In cross-appeals from an inter partes review of Shockwave’s U.S. Patent No. 8,956,371 for treating atherosclerosis, the Federal Circuit purported to clarify the appropriate role of applicant-admitted prior art (“AAPA”) in IPRs.  The ’371 patent claims treatment methods using lithotripsy—the use of sonic shockwaves to break up material, as is well-known in the treatment of kidney stones—in combination with an angioplasty balloon catheter that the patent’s specification admitted was well-known in the treatment of atherosclerosis.  Pursuant to 35 U.S.C. § 311(b), IPRs are limited to challenges based on “patents or printed publications.”  The Court had previously held that AAPA references in a challenged patent’s specification are not “patents or printed publications” and thus could not form the basis of a petitioner’s challenge, they could nonetheless be relied on as evidence of the background knowledge of an ordinarily skilled artisan.

Here, Shockwave argued that that Board and challenger CSI had improperly relied on the AAPA concerning angioplasty balloon catheters as a “basis” for invalidation, but the Federal Circuit disagreed.  The panel explained that a POSITA’s background knowledge could be used to provide a motivation to combine or even supply missing claim limitations, and found that the Board properly relied on AAPA for such purposes here.  In distinguishing its precedent, the Court focused primarily on whether the AAPA had been labeled as a “basis” or as background knowledge in the IPR petition, e.g., “This case is quite different from Qualcomm II, where the petitioner expressly labeled AAPA as a ‘basis’ for its challenge.”  The panel also suggested in a pair of parentheticals that the purported novelty of a missing claim limitation may inform a more substantive distinction:

We have not previously decided whether AAPA improperly forms the basis for a petition when it is used to show that a claim limitation (characterized by the patent as not disclosed in the prior art) would have been obvious over the prior art.  That is not the case here, where CSI properly relied on general background knowledge to supply missing claim limitations (which Shockwave does not argue were novel to the invention) and used AAPA as evidence of that general background knowledge.

Because CSI had not unambiguously described the angioplasty balloon catheter AAPA as a “basis” for its challenges, and relied on the AAPA to provide conventional claim elements in its obviousness analysis, the Federal Circuit found the AAPA was properly relied on as evidence of background knowledge of the art.  Among other things, the Court also found that the Board did not improperly discount objective indicia evidence directed to the “potential” commercial success of Shockwave’s product in development, and that CSI had standing to pursue its cross-appeal as to one upheld claim because it was close to beginning clinical trials of a product likely to be accused of infringement.  Ultimately, the Court affirmed on all grounds raised in Shockwave’s appeal; reversed on CSI’s cross-appeal; and found all challenged claims of the ’371 patent to be unpatentable over the prior art.

The full opinion can be found here.

Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe

Jason A. Wrubleski, Shareholder

Contributors:

Brittani Gambrell, Associate

Julia Davis, Associate