According to a press release, California-based Nevro will grant Massachusetts-based Boston Scientific a worldwide, non-exclusive, non-transferable license to practice the therapy without paresthesia, while promising not to sue for any of the built-in features. in any current Boston Scientific program. products for frequencies below 1,500 Hz. In exchange, Boston Scientific will also grant Nevro a worldwide, non-exclusive, non-transferable license under Boston Scientific’s asserted families of patents and an agreement not to sue.
Under the agreement, Boston Scientific will pay Nevro $85 million. However, a US court awarded Boston Scientific $20 million in damages in 2021 because Nevro infringed on two of its competitor’s patents.
Boston Scientific offers its technology as part of its “Precision” system, Nevro competes with its “Senza” system. The devices relieve chronic pain. Treatment consists of stimulating the spinal cord with high frequencies. The companies emphasize that the advantage of the treatment is that it does not cause sensory alterations in patients.
According to Reuters, Boston Scientific made $909 million last year from neuromodulation products, including its Precision line. Meanwhile, Nevro earned more than $386 million from its products. The news outlet cites filings with the US Securities and Exchange Commission.
Intensive litigation in the US and Europe
The settlement also ends all legal disputes between Nevro and Boston Scientific. The two competitors have been suing each other for patents in the US since 2016.
In 2018, the dispute spread to Germany. Boston Scientific filed a legal action (Case ID: 7 O 14659/18) in the Munich Regional Court.
According to information from JUVE Patent, the case is said to have concerned the delivery of around 30 European patents from Nevro to Boston Scientific. The Munich Regional Court initially rejected this. Ultimately, the dispute reached the Higher Regional Court, was referred back to the Regional Court, and then returned to the second instance (case number: 6 U 1771/22). The Munich Higher Regional Court had not delivered a ruling at the time of the settlement.
It is not known why Boston Scientific required the transfer of property rights in Europe. However, according to press reports, the company claimed in the US proceedings “that Nevro has hired dozens of former Boston Scientific employees since its early days as a company to steal its trade secrets.”
The two companies also recently clashed before the European Patent Office, attacking each other’s patents in EPO oppositions. There were no lawsuits in other European countries.
New Nevro client for Bird & Bird
According to information from JUVE Patent, the dispute with Boston Scientific was the first time that Bird & Bird acted on behalf of Nevro in court. The team led by partner from Düsseldorf, Oliver Jüngst, is mainly known on the market for pharmaceutical cases. He is currently representing CureVac against BioNTech in the first lawsuit related to a Covid 19 vaccine in Germany.
However, the Bird & Bird patent team is no stranger to the medical technology industry. Munich partner Boris Kreye, for example, is litigating heavily for Edwards Lifesciences against Meril in a heart valve dispute.
Boston Scientific and Vossius & Partner, on the other hand, have a long-standing relationship. Patent attorneys file patents with the EPO extensively. The litigation team is currently pursuing further proceedings against Cook Medical in Germany. However, the medical device maker has also retained other law firms for patent litigation in the past.
Well versed Vossius team
In general, the Vossius litigation team is very active in medical device litigation. ResMed, for example, is another major client that the team regularly litigates for, including in an extensive series of lawsuits against Fisher & Paykel. This ended in a deal in 2019. Then, as now, the Vossius team led by Thure Schubert faced the Bird & Bird team led by Oliver Jüngst.
According to JUVE Patent information, the US Boston Scientific proceedings were conducted by the law firms Akin Gump Strauss Hauer & Feld and Arnold Porter Kaye Scholler. On the opposite side, Sidley Austin, Sterne Kessler Goldstein & Fox, and Morris Nichols Arsht & Tunnell were active for Nevro.
For Boston Scientific
Vossius and partner (Munich): Thure Schubert (senior attorneys), Arnold Asmussen, (senior patent attorneys), Christoph Eisenmann (both patent attorneys); Lawyer: Philipp Widera
internal (USA): Matthew Jorgenson (Senior Executive Counsel, IP), Todd Messal (Senior Administrative Litigation Counsel), Ali Atefi,
bird bird (Düsseldorf): Oliver Jan Jüngst, Daniela Kinkeldey (patent attorney, Munich); associate: Alexander Dahlmanns
internal (San Francisco): Peter Socarras (Assistant General Counsel)
Munich Regional Court7th Civil Chamber
Matthias Zigann (presiding judge)
Munich Higher Regional Court6th Senate
Lars Meinhardt (presiding judge)