Sidley Prevails in Defending Medical Device Client Against Patent License Breach by Mayo Clinic Ventures: Mayo Ordered to Pay a Portion of Client’s Fees

Amongst thousands of license agreements involving Mayo Clinic Ventures, Sidley helps the first and only licensee to fight back against Mayo’s licensing practices.

Sidley recently secured a major arbitration victory for one of its medical device clients against Mayo Clinic Ventures. The results of the confidential arbitration decision were made public on May 7, 2024. In 2022, Mayo improperly revoked the medical device company’s contractual right to prosecute a family of neuromodulation patent applications that were assigned to a Mayo business partner. Mayo sought to improperly expand its patent rights in an effort to seek many millions in royalty payments from the company. The company immediately brought a breach of contract action in the Northern District of California, seeking a TRO against Mayo, and initiated arbitration. A two-day arbitration hearing was held in Minneapolis in September 2023, during which 19 fact and expert witnesses were examined by both sides (including the company’s founder and former CEO, chief medical officer, current general counsel, and Mayo’s chair and former vice chair). In the final award, the arbitrator found in favor of Sidley’s client on all claims, denied all of Mayo’s claims in their entirety, including its royalty demand, and ordered Mayo to return control of prosecution of the patents to the client, pay the client’s past costs for its patent prosecution work, and pay the client’s fees and costs for the California action.

Ching-Lee Fukuda (New York), Tai-Heng Cheng (New York), and Tom Broughan (Washington, D.C.) led the arbitration team, which also included Vania Wang (New York), Gaëlle Tribié (New York), Cassandra Liu (New York), and Naomi Igra (San Francisco). Ching-Lee and Dave Anderson (San Francisco) led the California team, which also included Sheila Armbrust (San Francisco) and Tom.