It was Varian Medical Systems Inc.’s chief rival that actually sued the radiation oncology and cancer treatment company for patent infringement first. But that’s easy to forget, given the long and multifaceted legal battle that Palo Alto-based Varian has fought with Swedish medical technology firm Elekta, its primary competitor.
In April, Varian got a walkaway settlement in a global patent war with Elekta. The litigation began back in 2015, when Elekta sued Varian in the Eastern District of Michigan, alleging that Varian’s linear accelerator infringed some of its patents.
Varian countersued and filed a complaint at the U.S. International Trade Commission in Washington, D.C. It also brought federal cases against Elekta in Delaware and California, as well as Germany and the United Kingdom. Varian worked on the matters with litigators at Cooley, Quinn Emanuel Urquhart & Sullivan and Beck, Bismonte & Finley.
The case at the ITC, which is tasked with barring the importation of products that infringe U.S. patents, alleged that Elekta violated several of Varian’s patents around radiotherapy systems that significantly reduce the length of cancer treatment sessions.
Back in Michigan, however, Varian challenged venue—successfully arguing that the trial judge should postpone the proceeding until the U.S. Court of Appeals for the Federal Circuit ruled on the same issue in another case.
“Because it was stayed for this indefinite amount of time, their case was put on ice, and ours were moving on,” said Keith Askoff, vice president and associate general counsel for intellectual property at Varian.
Following about a weeklong trial at the ITC, an administrative law judge ruled in October 2016 that certain radiotherapy Elekta devices infringed on three patents owned by Varian. The judge recommended an exclusion order that would bar importation of Elekta’s infringing radiotherapy systems. The ITC ultimately decided to review parts of the judge’s decision and remanded a portion for further development of the record—leaving Elekta, the company that initiated the litigation, facing the possibility of a limited exclusion order.
Meanwhile, as trial was proceeding in the United Kingdom last February, some important talks were going on behind the scenes, Askoff said. He and Elekta’s head of IP had informal discussions about structures that would satisfy both companies.
“We discussed the structure without a lot of deal terms, which broke the dam open and put us on our path [to settlement] then,” Askoff said. “We had a conceptual agreement and said, ‘Let’s stay true to that.’”
From there, settlement talks began, and we “got there very quickly,” in large part because of the accruing risks, Askoff said. In early April, both companies announced that they had reached a confidential settlement with no money changing hands and no future financial obligations between the two.
“We didn’t love the idea of still fighting because this is so counterproductive,” Askoff said. “How is it good for cancer patients for both of us to be doing this?”