Medtronic v. TMT Systems: Federal Circuit Appeal Voluntarily Dismissed
Medtronic, Inc. and three affiliates appealed a patentability ruling against TMT Systems, Inc. at the Federal Circuit over US7101393B2, a patent covering percutaneous endovascular apparatus for aneurysm and arterial blockage repair. The parties jointly agreed to dismiss the appeal after 519 days, with each side bearing its own costs.
A high-stakes endovascular patent dispute ends without appellate merits ruling
Filed in May 2023, Case No. 23-1895 brought Medtronic, Inc., Medtronic Galway Vascular Unlimited Co., Medtronic USA, Inc., and Medtronic Logistics, LLC as appellants before the United States Court of Appeals for the Federal Circuit, opposing TMT Systems, Inc. in a dispute rooted in the patentability of US7101393B2. That patent, filed under application number US10/624864, protects a percutaneous endovascular apparatus designed for the repair of aneurysms and arterial blockages — a clinically significant and commercially valuable device category.
The proceeding was classified as an invalidity or cancellation action on patentability grounds. On October 17, 2024, the Federal Circuit issued an order confirming the parties had agreed to dismiss the appeal under Federal Rule of Appellate Procedure 42(b). The court ordered that each side bear its own costs, meaning no prevailing-party cost award was entered. Because the dismissal was voluntary and the court issued no merits opinion, the underlying patentability question raised on appeal was left formally unresolved.
The 519-day duration from filing to dismissal suggests substantive activity — briefing, potential oral argument scheduling, or ongoing licensing negotiations — preceded the mutual agreement to withdraw. The cost-sharing arrangement is consistent with a negotiated resolution rather than a unilateral concession by either party. The public record does not disclose whether a settlement, licensing agreement, or commercial arrangement drove the dismissal, leaving the ultimate disposition of US7101393B2’s validity and enforceability a matter of inference rather than public record.
Filing to Voluntary dismissal in 519 days
519 days — above average for a voluntary Federal Circuit dismissal
Appeal dismissed by agreement: what the order means for both parties
Fed. R. App. P. 42(b): voluntary dismissal at appellate level
Rule 42(b) of the Federal Rules of Appellate Procedure allows parties to stipulate to dismissal of an appeal at any time. Crucially, this produces no merits ruling: the Federal Circuit did not assess the validity of US7101393B2, did not review the lower tribunal’s patentability analysis, and issued no precedential or non-precedential opinion on the substantive questions raised. The underlying invalidity or cancellation determination from the proceeding below therefore stands as the last formal adjudication on record.
No merits adjudicationVoluntary dismissal: with or without prejudice is not specified
The court’s order states the proceeding is ‘DISMISSED’ under Rule 42(b) but does not expressly specify whether the dismissal is with or without prejudice. The public record is silent on this distinction. In appellate patent proceedings, the practical effect often depends on whether the underlying administrative or district court decision already disposed of the validity question on the merits. Practitioners should not assume either preclusive or non-preclusive effect without reviewing the complete procedural history of the originating tribunal.
Preclusive effect unclearMedtronic withdraws appeal: patent enforceability picture remains unsettled
By agreeing to dismiss, the Medtronic entities foregoed any chance of the Federal Circuit reversing or modifying an adverse patentability ruling below. However, without a merits opinion, no appellate precedent runs against US7101393B2’s validity. The cost-sharing order suggests neither party conceded defeat. Medtronic retains the patent in its portfolio and the commercial freedom that flows from an unenforced invalidity or cancellation finding — though the strength of that position depends on what the originating proceeding decided.
No appellate concession recordedTMT Systems avoids a Federal Circuit merits ruling in its favour or against
TMT Systems agreed to dismissal without securing a Federal Circuit affirmance of any favourable lower ruling. For a party that may have prevailed below on patentability grounds, dismissal without a merits opinion means the appellate validation it might have obtained — useful in future licensing or litigation contexts — was not achieved. The equal cost-sharing arrangement is consistent with a commercially negotiated exit rather than a litigated win for either side.
No appellate win formalisedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Medtronic, Inc. | Company | Medical device group — holder of US7101393B2, endovascular repair technologySearch in Eureka ↗ |
| Co-Plaintiff | Medtronic Galway Vasular Unlimited, Co. | Company | Search in Eureka ↗ |
| Co-Plaintiff | Medtronic USA, Inc. | Company | Search in Eureka ↗ |
| Co-Plaintiff | Medtronic Logistics, LLC | Company | Search in Eureka ↗ |
| Defendant | TMT Systems, Inc. | Company | TMT Systems, Inc. — respondent in Federal Circuit patentability appealSearch in Eureka ↗ |
| Plaintiff counsel | Alexis Cohen | Attorney | Counsel for Medtronic, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Brittany Blueitt Amadi, Esq. | Attorney | Counsel for Medtronic, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Gregory H. Lantier | Attorney | Counsel for Medtronic, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Hannah Elise Gelbort | Attorney | Counsel for Medtronic, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Jennifer L. Graber | Attorney | Counsel for Medtronic, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Mark Christopher Fleming | Attorney | Counsel for Medtronic, Inc.Search in Eureka ↗ |
| Plaintiff law firm | Wilmer Cutler Pickering Hale & Dorr LLP | Law Firm | Representing Medtronic, Inc.Search in Eureka ↗ |
| Defendant counsel | Christopher James Gaspar | Attorney | Counsel for TMT Systems, Inc.Search in Eureka ↗ |
| Defendant counsel | Nathaniel T. Browand | Attorney | Counsel for TMT Systems, Inc.Search in Eureka ↗ |
| Defendant law firm | Milbank LLP | Law Firm | Representing TMT Systems, Inc.Search in Eureka ↗ |
| Defendant law firm | Milbank, Tweed, Hadley & McCloy LLP | Law Firm | Representing TMT Systems, Inc.Search in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Court of Appeals for the Federal CircuitSearch in Eureka ↗ |
Official order — verbatim text
The order’s operative language — ‘DISMISSED under Fed. R. App. P. 42(b)’ — confirms a purely procedural exit: the Federal Circuit exercised no appellate review and issued no opinion on the patentability merits of US7101393B2. The equal cost-sharing clause reinforces the bilateral nature of the agreement, suggesting neither party secured a concession from the other. In practical terms, this means the validity and enforceability of the patent remain governed by the last substantive decision from the originating proceeding, and no Federal Circuit precedent — favourable or adverse — attaches to the patent as a result of this appeal.
US7101393B2 — percutaneous endovascular aneurysm repair apparatus
US7101393B2, filed under application number US10/624864, protects a percutaneous endovascular apparatus designed for the repair of aneurysms and arterial blockages. Percutaneous endovascular procedures are a cornerstone of modern vascular surgery, enabling minimally invasive access to repair life-threatening conditions including abdominal aortic aneurysms. Patents in this domain typically cover catheter delivery systems, stent-graft architectures, sealing mechanisms, and deployment configurations — all of which represent high-value, technically differentiated intellectual property in a competitive medical device market.
The strategic significance of US7101393B2 is underscored by the involvement of multiple Medtronic entities in defending it at the Federal Circuit level. Medtronic is a dominant player in the endovascular repair market through its Endurant and Valiant product lines, and patents protecting the structural and procedural elements of percutaneous repair apparatus carry direct commercial weight against competitors such as Cook Medical, Gore, and Endologix. A live patentability dispute over this asset — reaching appellate level before mutual withdrawal — suggests the patent was considered commercially material by both sides.
Should you run an FTO against US7101393B2?
Any company developing, manufacturing, or commercialising percutaneous endovascular devices for aneurysm or arterial blockage repair should assess their exposure to US7101393B2. The absence of a definitive Federal Circuit invalidity ruling means the patent remains potentially enforceable. This is particularly relevant for teams working on next-generation stent-graft systems, catheter delivery platforms, or minimally invasive vascular repair devices that may fall within the apparatus claims of this patent.
PatSnap Eureka’s FTO Search Agent can map the full claim landscape of US7101393B2, identify continuation and divisional filings from the US10/624864 application family, and surface prior art that may bear on validity. Eureka also enables competitive intelligence monitoring — tracking new filings by Medtronic entities in the endovascular space — so your R&D and legal teams receive early warning of emerging patent risk before products reach the market.
Run a freedom-to-operate analysis on US7101393B2 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit appeals involving endovascular device patents
Explore comparable Federal Circuit patentability appeals involving percutaneous endovascular and vascular repair device patents, including disputes from PTAB and district court origins.
What this case signals for the endovascular device IP landscape
A mutual Federal Circuit exit over a core aneurysm repair patent raises questions about patent strength, licensing dynamics, and competitive freedom in the endovascular device sector.
Voluntary Federal Circuit dismissals often signal a commercial resolution
When both parties agree to dismiss an appeal mid-stream with equal cost-sharing, this typically signals a negotiated outcome — a licence, cross-licence, or commercial agreement — rather than a purely procedural withdrawal. Competitors and market entrants in the percutaneous endovascular device space should consider whether a new IP arrangement may affect the competitive landscape around aneurysm repair technology.
US7101393B2 remains a live risk factor without a definitive validity ruling
Because the Federal Circuit issued no opinion on patentability, US7101393B2 has not been authoritatively invalidated at appellate level. Product teams and R&D leaders developing competing endovascular apparatus should treat this patent as requiring independent FTO analysis — the absence of a merits ruling leaves its enforceability an open question that a subsequent enforcement action could reopen.
Medtronic v TMT — key questions answered
The Federal Circuit appeal was voluntarily dismissed by agreement of both parties under Fed. R. App. P. 42(b) on October 17, 2024. No merits opinion was issued. The dispute concerned the patentability of US7101393B2, covering a percutaneous endovascular apparatus for aneurysm and arterial blockage repair. Each side was ordered to bear its own costs.
A Rule 42(b) dismissal produces no appellate merits ruling. The Federal Circuit did not assess the validity of US7101393B2. The patent’s validity status is therefore governed by whatever the originating proceeding — likely a PTAB inter partes review or district court — decided. No Federal Circuit precedent on the patent’s patentability was established.
The four appellants — Medtronic, Inc., Medtronic Galway Vascular Unlimited Co., Medtronic USA, Inc., and Medtronic Logistics, LLC — suggest a structured international IP holding arrangement, which is common for large medical device companies that distribute patent ownership across subsidiaries for tax, licensing, and enforcement purposes. The Galway entity in particular is consistent with Medtronic’s known Irish IP holding structure.
US7101393B2 covers a percutaneous endovascular apparatus for repair of aneurysms and arterial blockages — technology central to minimally invasive vascular surgery. Key competitors in this space include Cook Medical, W.L. Gore & Associates, and Endologix, all of which develop competing stent-graft and endovascular delivery systems that could potentially interact with the patent’s claims.
The public record does not confirm a settlement. The dismissal order references only mutual agreement and equal cost-sharing under Rule 42(b). This arrangement is consistent with a negotiated resolution — such as a licence or commercial agreement — but the court order does not disclose any underlying terms. The actual disposition of the dispute between the parties remains private.
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