Supreme Court to hear Medtronic’s appeal of Boston Scientific’s CRM patent win

Supreme Court to hear Medtronic's appeal of Boston Scientific CRM patent win

The U.S. Supreme Court agreed to hear Medtronic‘s (NYSE:MDT) appeal of a lower court’s decision that the medical device company infringes a cardiac rhythm therapy device patent owned by rival Boston Scientific (NYSE:BSX).

Last September the U.S Court of Appeals for the Federal Circuit overturned a Delaware court’s decision that Medtronic hadn’t infringed on Boston Scientific’s patents, finding that the lower court used "a legally incorrect allocation of the burden of proof" and remanding the case for reconsideration.

Medtronic appealed that decision, and today the Supremes granted certiorari, meaning the 9 justices will take up the issue during the high court’s next session beginning in October.

The long-running dispute concerns fundamental CRT technology covered in a pair of patents issued to CRM pioneer Dr. Morton Mower, credited with inventing the technology that ultimately became known as a cardiac resynchronization therapy device.

Mower’s CRT helps the hearts left and right ventricles beat simultaneously, increasing the heart’s efficiency, and 2 patents for the device are the property of Mirowski Family Ventures, which exclusively licenses both to Guidant Corp. Boston Scientific acquired Guidant in 2006 for an eyebrow-raising $26 billion.

Medtronic in 1991 entered into a sublicense agreement for the patents with Eli Lilly (NYSE:LLY), which owned Guidant at the time. The agreement gave Medtronic leverage to challenge 1 of the patents, which the medical device company began doing in 2003.

Over the course of several years Medtronic, Eli Lilly and MFV battled over the validity of 1 of the CRT patents and whether or not Medtronic’s devices infringed on the technology.

Medtronic and MFV formed a Litigation Tolling Agreement to hash out the details while Medtronic paid royalties into escrow, and in 2007 MFV handed Medtronic a list of technologies that were potentially infringing on the CRT patents.

Medtronic disagreed with the findings, filing a complaint for declaratory judgement against the patents. Because Medtronic was still a licensee of MFV’s technology, MFV could not file a counterclaim on either of its patents.

The case finally closed on a question over who was responsible for providing the burden of evidence – the patentee, MFV, or the defendant, Medtronic. Delaware District Court Judge Susan Robinson ruled in April 2011 that the burden rested on the patentee, and that MFV, which mainly provided responses to Medtronic’s arguments and did not lay out a point-by-point description of the alleged infringement, had not proved its case.

MFV and Boston Scientific appealed that decision, arguing that Medtronic bore the burden of proof because it originally filed the lawsuit. Since the terms of MFV’s deal with Medtronic prevented MFV from filing counterclaims on its patents and required Medtronic to file for declaratory judgement, Medtronic was the party "seeking relief from the court" and thus responsible for proving its case, MFV argued.

Last fall Federal Circuit Judges Richard Linn, Alan Lourie and Sharon Prost agreed, concluding that the lower court had mistakenly but the burden of proof on MFV when Medtronic had "disturbed the status quo" with its lawsuit.

"Medtronic is unquestionably the party now requesting relief from the court: it already has a license; it cannot be sued for infringement; it is paying money into escrow; and it wants to stop," Linn wrote in the decision. "In contrast, regarding the patents at issue here, MFV seeks nothing more than to be discharged from the suit and be permitted to continue the quiet enjoyment of its contract."

"In other words, it is Medtronic and not MFV that is asking the court to disturb the status quo ante and to relieve it from a royalty obligation it believes it does not bear," Linn added. "Consistent with the above, for the court to disturb the status quo ante, Medtronic must present evidence showing that it is entitled to such relief."

RSS From Medical Design & Outsourcing

  • Drug Deactivation program roll out to all facilities for safe disposal of unused prescription medications
    Verde Technologies announced that New Brighton-based Meridian Behavioral Health, the largest for-profit substance abuse and addiction treatment group in Minnesota, has become its most recent partner in the deactivation and safe disposal of prescription medications including methadone. Meridian is the first behavioral health group to roll out the Deterra Drug Deactivation System to all 17 […]
  • Lophius Biosciences introduces T-activated ImmunoScan Cocktail
    Lophius Biosciences announced the commercial launch of T-Track ImmunoScan and T-activated ImmunoScan Cocktail. Based on a proprietary and very specific cocktail of stimulants in combination with the Company’s T-activation technology, T-Track ImmunoScan and T-activated ImmunoScan Cocktail specifically target different cell types involved in both the adaptive and innate immune system. T-Track ImmunoScan and the T-activated […]
  • Cosasco’s wireless communications protocol makes electrically hazardous areas safer
    Cosasco has expanded the functionality of its CWT-9020 wireless water system corrosion monitor for electrically hazardous areas by offering ISA100 Wireless communications protocol. Along with WirelessHART 7, the new protocol option allows the transmitter to integrate with an even wider range of existing wireless systems. ISA100 Wireless supports more wireless devices and provides an effective […]
  • Vicon captures a new development in motion capture (mocap)
    Vicon announced the launch of its new flagship camera platform, the Vicon Vantage. Drawing on over 30 years’ of motion capture (mocap) experience, the Vantage platform combines innovative technology with accessible design to open up motion capture to a broader audience. Vicon is a motion capture technology specialist company for science and life industries. Advances in […]
  • Satel’s latest product sets a new milestone in radio manufacturing
    The new Satelline TR4, from the Finnish manufacturer of radio data transmission systems, Satel sets a new milestone. The compact UHF transceiver with transmitting power of 1,000 mW is compatible with the protocols of Pacific Crest, Trimble and Satel. The type certifications in all important regions of the world make the TR4 ideal for integration […]
  • SCHURTER announces retirement of founder and management changes
    SCHURTER announced the retirement of founder Bruno H. Schurter on June 29, 2015. The company, founded in 1982 in Petaluma, California, will change management effective July 1, 2015. Bruno H. Schurter, president and CEO will retire after 33 years of heading up the privately held company, which is a subsidiary of SCHURTER Holding AG, founded in […]
  • Silicone: Expanding the horizon for modern medical devices
    Editor’s note: This article comes from Albright Technologies a manufacturer of custom silicone prototypes and provides volume production for medical, pharmaceutical, industrial, and other applications. Silicone materials have been around for more than 70 years. Beginning in the 1960s, silicones have played an important and evolving part in products designed for the medical field. Since that time, […]
  • DeNovo Sciences appoints a molecular diagnostics veteran as new CSO
    DeNovo Sciences, a producer of  liquid biopsy products, announced the appointment of Dr. Yixin Wang as Chief Scientific Officer (CSO). Dr. Wang is a veteran in molecular diagnostics where he has played significant R&D roles at large, multi-national companies including Parke-Davis/Pfizer, Veridex/Johnson & Johnson and Ventana/Roche. He will lead strategic initiatives for clinical development of DeNovo’s […]
  • Albright Technologies expands their silicone offerings
    Albright Technologies, a rapid silicone prototyper, has added silicone injection molding tooling and services to its product lineup. Liquid silicone injection molding became a suitable product offering as Albright expanded its offerings to better serve the silicone molding market. While silicone prototypes are commonly manufactured with low volumes in mind; injection molded liquid silicone rubber parts are […]
  • Applied Silver launches SilvaClean, silver treatment for textiles
    Applied Silver, Inc, is launching SilvaClean, a state-of-the-art silver treatment for textiles, at the Association for Professionals in Infection Control and Epidemiology’s (APIC) forty-second Annual Conference taking place at the Music City Center in Nashville, from June 27 through June 29. Hospitals have invested significantly in reducing the potential of infection through products and processes designed […]
  • Two-Component technology for improved quality of life
    In the field of injection molding and mold making, toolcraft covers all processes within the added value chain–from the design and selection of materials through to the creation of finished and qualified products. Complete solutions offered include injection molding for parts in the small and extremely small component areas, e.g. for medical technology. Utilizing two-component […]

Leave a Reply