Conditional Offer To Abandon Claims Does Not Constitute Waiver To Assert

According to a recent district court opinion, a party may waive its right to assert infringement on claims that it voluntarily agrees to give up (e.g., by abandoning the claims). Such a waiver will be enforced as an equitable estoppel defense for the alleged infringer. To establish a waiver, there must be a clear and unequivocal act of a party showing such a purpose.

In Snyders Heart Valve LLC v. St. Jude Medical S.C., Inc. et al Case No. 0:2018cv02030 (D. Minn. March 23, 2021), the District Court reviewed the proceedings between the parties to determine whether Snyders waived its right to assert seven patent claims revived by the Federal Circuit on appeal of an inter partes review ("IPR") by the Patent Trial and Appeals Board ("PTAB"). Snyders initially filed a Complaint in 2016, asserting that St. Jude is infringing U.S. Patent No. 6,821,297 ("the '297 Patent") and U.S. Patent No. 6,540,782 ("the '782 Patent"), which both relate to devices for artificial heart