New Amsterdam LLC v. Medtronic: Bioabsorbable Drug Plug Patent Suit Dismissed
New Amsterdam, LLC brought a patent infringement action against medical device giant Medtronic, Inc. in the Western District of Texas, asserting US6916483B2 covering bioabsorbable plugs containing drugs. The case closed after 282 days with a voluntary dismissal without prejudice — leaving Medtronic exposed to potential re-filing.
A strategic early exit in a W.D. Texas bioabsorbable implant dispute
On 22 April 2023, New Amsterdam, LLC filed suit against Medtronic, Inc. in the Western District of Texas before Judge David Alan Ezra, asserting infringement of US6916483B2 — a patent directed to bioabsorbable plugs containing drugs, a technology relevant to controlled drug-delivery implants used across multiple therapeutic areas. Medtronic, one of the world’s largest medical device manufacturers, responded by filing counterclaims, signalling an intent to contest the patent’s validity or enforceability.
The case terminated on 29 January 2024 when Judge Ezra granted New Amsterdam’s motion for voluntary dismissal without prejudice and simultaneously dismissed Medtronic’s counterclaims without prejudice. The without-prejudice designation is legally significant: New Amsterdam retains the right to re-assert the same patent against Medtronic in a future action, subject to applicable statutes of limitations and any procedural constraints that may arise from the earlier filing.
At 282 days, the matter closed before substantive claim construction or merits adjudication, which is consistent with a pre-discovery resolution or negotiated standstill. The public record does not disclose whether a licensing agreement, covenant not to sue, or other commercial arrangement underlies the dismissal. The absence of a costs order and the without-prejudice posture suggest the parties may have reached a private accommodation — or that plaintiff is preserving optionality for a refiled or restructured action.
Filing to Voluntary dismissal in 282 days
282 days — resolved before trial, faster than median W.D. Texas patent lifecycle
Voluntarily dismissed without prejudice: what the ruling means for both parties
Without prejudice dismissal preserves plaintiff’s claims
A voluntary dismissal without prejudice under Federal Rule of Civil Procedure 41(a) terminates the current action without adjudicating the merits. Critically, the plaintiff is not barred from re-filing the same claims against the same defendant. The court granted both the plaintiff’s dismissal motion and dismissed Medtronic’s counterclaims on the same terms, returning all parties to their pre-suit positions.
Rule 41(a) — no merits rulingPublic record is silent on whether prejudice was intended
A voluntary dismissal may be filed with or without prejudice — the distinction is material. Dismissal with prejudice extinguishes the claims permanently; without prejudice does not. Here, the court’s order expressly states ‘WITHOUT PREJUDICE’, meaning New Amsterdam retains its cause of action. Whether this reflects a licensing resolution, a tactical pause, or a prelude to refiling is not disclosed in the public docket.
Refiling right preservedMedtronic’s counterclaims also dismissed — no invalidity ruling secured
Medtronic’s counterclaims — which likely included invalidity or non-infringement assertions — were dismissed without prejudice alongside plaintiff’s complaint. This means Medtronic did not obtain a declaratory judgment of invalidity or non-infringement. If New Amsterdam refiles, Medtronic will need to re-establish its defences from the outset, though prior art research already conducted may be redeployable.
No invalidity ruling for MedtronicPatent remains enforceable and cloud over Medtronic persists
US6916483B2 has not been invalidated, found unenforceable, or subjected to any adverse claim construction ruling. For Medtronic and other manufacturers operating in the bioabsorbable drug-delivery implant space, the patent continues to represent a litigation risk. Companies with products potentially covered by this patent should monitor New Amsterdam’s future assertion activity and consider proactive freedom-to-operate analysis.
US6916483B2 still liveFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | New Amsterdam, LLC | Company | Patent assertion entity — holder of US6916483B2 covering bioabsorbable drug-containing plugsSearch in Eureka ↗ |
| Defendant | Medtronic, Inc. | Company | Medtronic, Inc. — global medical device manufacturer across multiple therapeutic categoriesSearch in Eureka ↗ |
| Plaintiff counsel | Christopher A. Honea | Attorney | Counsel for New Amsterdam, LLCSearch in Eureka ↗ |
| Plaintiff counsel | M. Scott Fuller | Attorney | Counsel for New Amsterdam, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Randall T. Garteiser | Attorney | Counsel for New Amsterdam, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Rene A. Vazquez | Attorney | Counsel for New Amsterdam, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Dnl Zito | Law Firm | Representing New Amsterdam, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Garteiser Honea PLLC | Law Firm | Representing New Amsterdam, LLCSearch in Eureka ↗ |
| Defendant counsel | Fred I. Williams | Attorney | Counsel for Medtronic, Inc.Search in Eureka ↗ |
| Defendant counsel | John Wittenzellner | Attorney | Counsel for Medtronic, Inc.Search in Eureka ↗ |
| Defendant counsel | Todd E. Landis | Attorney | Counsel for Medtronic, Inc.Search in Eureka ↗ |
| Defendant law firm | Williams Simons and Landis PC | Law Firm | Representing Medtronic, Inc.Search in Eureka ↗ |
| Presiding judge | Judge David Alan Ezra | Judge | Texas Western District CourtSearch in Eureka ↗ |
Official order — verbatim text
The court’s order grants voluntary dismissal without prejudice on both the plaintiff’s complaint and Medtronic’s counterclaims. The phrasing ‘for the foregoing reasons’ indicates the court considered the Rule 41(a) motion on its merits rather than issuing a purely ministerial order. Because neither infringement nor invalidity was adjudicated, the ruling carries no precedential weight on the patent’s scope or validity — US6916483B2 survives fully intact as an enforceable asset.
US6916483B2 — bioabsorbable plugs containing drugs
US6916483B2, filed under application number US10/200355, protects bioabsorbable plugs containing drugs — a class of implantable medical devices designed to degrade in vivo while releasing a therapeutic payload at or near the implant site. The technology sits at the intersection of biomaterials science and controlled drug delivery, encompassing formulation, structural design, and release-rate engineering. The patent’s application date places its priority in the early 2000s, a period of intense innovation in resorbable polymer platforms for orthopaedic, vascular, and soft-tissue indications.
For the medical device sector, bioabsorbable drug-eluting implants represent a commercially significant and technically crowded space — ranging from resorbable haemostatic plugs to drug-eluting bone void fillers. US6916483B2’s assertion against Medtronic, whose portfolio spans neurology, cardiac, and orthopaedic device platforms, suggests New Amsterdam believes one or more Medtronic products fall within the patent’s claim scope. Competitors operating in adjacent categories — including resorbable sinus, orthopaedic, or vascular implant segments — should evaluate their exposure independently.
Should your bioabsorbable drug-delivery product be cleared against US6916483B2?
Any company developing or commercialising bioabsorbable implants with integrated drug-eluting functionality should consider a freedom-to-operate assessment against US6916483B2. The patent’s without-prejudice dismissal against Medtronic confirms it remains enforceable. Product teams working on resorbable plugs, drug-eluting bone void fillers, haemostatic implants, or similar absorbable drug-delivery formats face potential claim overlap depending on material composition and release mechanism.
PatSnap Eureka’s FTO Search Agent can map the independent and dependent claims of US6916483B2 against your specific product architecture, identify relevant prior art that may support design-around or invalidity arguments, and flag any co-pending continuations or related family members that may extend the patent’s reach. Automated monitoring ensures your team is notified if New Amsterdam refiles or pursues related enforcement in other jurisdictions.
Run a freedom-to-operate analysis on US6916483B2 to assess your product’s exposure
Run FTO in Eureka →Similar bioabsorbable implant patent cases in W.D. Texas and federal courts
Explore patent infringement actions involving bioabsorbable drug-delivery implant technology litigated in the Western District of Texas and comparable federal venues.
What this case signals for the bioabsorbable drug-delivery IP landscape
A without-prejudice exit against Medtronic suggests New Amsterdam is managing its enforcement strategy — not abandoning it.
Without-prejudice dismissals are not concessions — monitor for refiling
Plaintiffs routinely use voluntary without-prejudice dismissals to pause litigation while licensing negotiations proceed or to restrategise claim mapping. New Amsterdam retains full rights to refile against Medtronic. IP teams at medical device companies should set alerts on New Amsterdam, LLC and US6916483B2 to track any subsequent enforcement activity.
Medtronic’s counterclaims signal the patent’s vulnerability was worth testing
The fact that Medtronic filed counterclaims — typically invalidity or non-infringement assertions — before the dismissal suggests its counsel identified substantive defences. The without-prejudice resolution means those arguments were never tested on the merits, leaving US6916483B2’s validity judicially unconfirmed and the patent asserted against other targets a live possibility.
New v Medtronic — key questions answered
No. The case was voluntarily dismissed without prejudice before any substantive merits ruling. US6916483B2 was not subjected to claim construction, invalidity analysis, or any judicial finding on enforceability. The patent remains valid and enforceable as of the case closing date.
Yes. A voluntary dismissal without prejudice under Rule 41(a) does not bar the plaintiff from refiling the same claims against the same defendant. New Amsterdam retains its cause of action under US6916483B2, subject to applicable statutes of limitations. The public record does not disclose any covenant not to sue or licensing agreement that would restrict refiling.
Medtronic’s counterclaims — the specifics of which are not detailed in the public verdict summary but typically include invalidity and non-infringement assertions — were also dismissed without prejudice. Medtronic did not obtain a declaratory judgment in its favour. If the case is refiled, Medtronic would need to re-assert those defences.
US6916483B2 covers bioabsorbable plugs containing drugs — implantable devices designed to degrade in the body while releasing a therapeutic agent. Medtronic’s broad medical device portfolio, spanning orthopaedic, cardiac, and neurological platforms, contains product categories that may overlap with these claims. The specific Medtronic products alleged to infringe were not publicly specified in the case record reviewed.
The public record is silent on whether a licensing deal, covenant not to sue, or other commercial resolution underlies the dismissal. Without-prejudice exits in patent cases are consistent with ongoing licensing negotiations, a tactical pause to refine claim mapping, or a broader portfolio licensing arrangement. The absence of a costs award and the symmetric without-prejudice treatment of both parties’ claims are consistent with a negotiated resolution, though this cannot be confirmed from the docket alone.
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