When cancelling a claim can cost $100MM+

In Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, the Federal Circuit clarified only last month (July 2025) that prosecution history estoppel applies not only to amended claims but also to canceled claims when those canceled claims are closely related in substance to the asserted claims. Colibri had cancelled claims involving “retracting a moveable sheath” during examination in order to eliminate a rejection that the application didn’t support that exact language, but had received claims involving “pushing out a pusher member.” Although the district court agreed that the Medtronics product infringed to Colibri’s issued claim because it was ‘equivalent’, the Federal Circuit overturned the decision and wiped out over $100 million in damages because the Medtronics product was actually more like the cancelled language — which Colibri had disclaimed by cancelling.

For technology entrepreneurs, this decision reinforces the critical importance of strategic claim drafting and decisions made during examination. When building a patent portfolio intended for licensing, enforcement, or investment, early-stage claim strategy must anticipate the potential downstream impact of amendments and cancellations. Every decision made during the patent application process can have major impacts down the road. A patent practitioner experienced not only in getting you patents but in preparing you for monetizing patents can help you reduce weakness and significantly expand your enforcement options—potentially multiplying the value of your patent asset in monetization scenarios.

To align your patent portfolio to support your long-term commercialization goals, contact Timothy Snowden at Definitive Patents, a member firm of Synchrony IP, for strategic patent consultation.

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