After handling the Teleflex and Medtronic patent infringement dispute since its inception in 2019, Chief Judge Patrick J. Schiltz of the District Court of Minnesota issued a recusal order in October 2024, officially removing himself from the case. The Federal Circuit’s September 16, 2024, decision (Vascular Solutions LLC v. Medtronic, Inc., Appeal No. 2024-1398) in which the Federal Circuit panel admonished Judge Schiltz’s prior claim construction and overturned his invalidation of seven catheter-related patents for indefiniteness prompted the recusal. Judge Schiltz concluded that, based on the Federal Circuit decision, he was still at an impasse about whether the claims are indefinite or not.
Procedural Background
This recusal saga begins in July 2019 when Vascular Solutions LLC, Teleflex LLC, Arrow International LLC, and Teleflex Life Sciences LLC (collectively “Teleflex”) filed a patent infringement suit against Medtronic, asserting a total of 40 claims across seven patents. All of Teleflex’s asserted patents are directed to “a coaxial guide catheter” for use in cardiology procedures. The claimed catheter product includes a rigid portion or segment which has a “side opening” that allows for the extension catheter to receive and deliver devices while it is within the guide catheter.
In its complaint, Teleflex asserts that Medtronic’s Telescope™ guide extension catheter infringes several of Teleflex’s patent claims. The Minnesota district court conducted claim construction on 10 of the asserted claims including the “substantially rigid portion/segment” claim limitation. Teleflex asserted that the “portion” or “segment” claim term should be construed as a “longitudinal section,” while Medtronic argued that the limitation should be construed as a “portion/section of the device acting as a pushrod.”
The district court found that the claims reciting this phrase vary in the way they disclose the side opening—some claims recite the side opening as part of the “substantially rigid portion,” while others require the side opening to be separate from or distal to the “substantially rigid portion.”
The district court ultimately rejected both parties’ constructions and, finding itself at an impasse, even appointed former director of the U.S. Patent and Trademark Office Andrei Iancu as an expert to propose an alternative construction. However, after determining that Iancu’s construction would render some of the claims “nonsensical,” the district court found that the claims were mutually exclusive, and that Teleflex’s construction would result in the same device simultaneously infringing mutually exclusive claims. Lacking a viable construction, presiding Judge Schiltz held all claims reciting the “substantially rigid portion/segment” phrase invalid for indefiniteness.
On appeal, the Federal Circuit found that the district court erred. The three-judge panel ordered the district court to conduct its claim construction on remand with the understanding that claims are not necessarily “mutually exclusive” at the claim construction stage since each independent claim is a different ordered combination of limitations. The Federal Circuit did not stop there but proceeded to fault the lower court for its conclusion that the boundary of the “substantially rigid portion/segment” needed to be construed consistently across the independent claims. The Court articulated that the mere fact that some of Teleflex’s claims recite the side opening as part of the “substantially rigid portion” while others designate the side opening as its own segment does not render the claims “mutually exclusive,” as long as the claims set different boundaries between the segments they define.
Judges’ Subsequent Recusal
Following the Federal Circuit’s September opinion, Judge Schiltz recused himself from all subsequent proceedings related to this dispute, finding that “the court does not believe it can impartially resolve the parties’ dispute.” In his recusal order, Judge Schiltz admitted that he has struggled for years to define the key phrase “substantially rigid portion” to no avail, and that he is “at a loss” in reconciling the Federal Circuit’s decision—articulating that the claims are not mutually exclusive—with simple logic and the facts of the case.
The case was subsequently reassigned to Judge Jerry Blackwell who recused himself without explanation the following Monday. Since then, the case has been reassigned twice: first to Judge Nancy Brassel, and next to Judge Laura Provinzino. As of Nov. 1, 2024, all further proceedings should be heard by Judge Laura Provinzino – barring her recusal, of course.