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St. Jude Medical, Volcano Reach Lawsuits Armistice
August 11, 2014
4 Min Read
St. Jude Medical and Volcano Corp. have apparently decided to stand down when it comes to lawsuits related to technologies including tunable lasers used in optical coherence tomography (OCT) imaging systems.
The two companies have agreed to have a host of lawsuits dismissed with prejudice, and with no payments, according to a filing Volcano made Thursday with the U.S. Securities and Exchange Commission (SEC).
The settlement agreements run until August 7, 2036. They also include an agreement for the companies not to sue one another for infringing on any patents involved in the litigation, patents on current products (with some exceptions), and for functional measurement products for which regulatory approval is submitted before August 7, 2016.
There are some exceptions to the agreements. Still, the settlements appear to have been a way for San Diego-based Volcano to clean out some legal cobwebs related to its laser subsidiary Axsun.
Volcano announced last that it would divest itself of Axsun. The divestiture allows Volcano "to focus on coronary imaging and physiology leadership peripheral expansion, profitability and business scale," said Volcano president and CEO Scott Huennekens.
Refresh your medical device industry knowledge at MEDevice San Diego, September 10-11, 2014.
Before Volcano acquired Axsun in December 2008, LightLab and Axsun had worked together to develop a tunable laser for use in OCT imaging systems, according to St. Jude Medical's second quarter report, released in July.
While the laser was in development, LightLab and Axsun agreed that Axsun would sell its human coronary artery imaging tunable lasers exclusively to LightLab for a period, according to St. Jude.
St. Jude fired the first legal volley in 2009, alleging business interference, breach of contract, and misappropriation of trade secrets. Volcano paid LightLab approximately $5.4 million, although the Massachusetts Supreme Judicial Court issued a ruling in Volcano and Axsun's favor on July 28.
Axsun and Volcano fired back in Delaware Chancery Court in 2010 seeking a declaration of Axsun's rights regarding certain OCT technology known as the High Definition Swept Source. LightLab countersued.
St. Jude sued Volcano in federal district court in Delaware in 2010, alleging that Volcano's pressure guidewire products infringe five patents owned by St. Jude Medical. Volcano filed a counterclaim, alleging that St. Jude infringed on three of its patents.
And on it went.
The settlements exclude St. Jude patent infringement claims regarding wireless communication of physiological pressure sensor data between a sensor and a receiver, and intravascular OCT products. It also excludes Volcano's patent infringement claims regarding iFR patents and products for intravascular ultrasound (i.e. IVUS products), and products of an assignee existing prior to the assignment.
The settled lawsuits include:
LightLab Imaging, Inc. v. Axsun Technologies, Inc. and Volcano Corporation, in the Massachusetts Superior Court and the Massachusetts Supreme Judicial Court (the "Massachusetts Proceeding");
Axsun Technologies, Inc. and Volcano Corp. v. LightLab Imaging, Inc., in the Delaware Chancery Court;
LightLab Imaging, Inc. v. Axsun Technologies, Inc. and Volcano Corp., in the Delaware Chancery Court;
St. Jude Medical, Cardiology Division, Inc., St. Jude Medical Systems AB, and St. Jude Medical S.C., Inc. v. Volcano Corp., in the U.S. District Court for the District of Delaware;
St. Jude Medical, Cardiology Division, Inc., St. Jude Medical Systems AB, and St. Jude Medical S.C., Inc. v. Volcano Corp., in the United States District Court for the District of Delaware;
Volcano Corp. v. St. Jude Medical, Cardiovascular and Ablation Technologies Division, Inc.; St. Jude Medical, Cardiology Division, Inc.; St. Jude Medical, U.S. Division; St. Jude Medical S.C., Inc.; and St. Jude Medical Systems AB, in the U.S. District Court for the District of Delaware and the U.S. Court of Appeals for the Federal Circuit; and
St. Jude Medical, Cardiology Division, Inc., v. Volcano Corporation, and Michelle K. Lee, Deputy Director, U.S. Patent and Trademark Office, in the U.S. Patent and Trademark Office and the U.S. Court of Appeals for the Federal Circuit.
Nancy Crotti is a contributor to Qmed and MPMN.
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