Mirowski Family Ventures wants the U.S. Supreme Court to revisit its patent battle against Medtronic (NYSE:MDT), asking the high court to reverse an appeals court ruling that Medtronic did not infringe defibrillator patents licensed by MFV to Boston Scientific (NYSE:BSX).
In January the Supremes ruled unanimously that MFV must prove that Medtronic’s devices are in violation, even though Medtronic filed the original challenge against the patent in 2003, while still under a sub-license agreement for the technology.
Last spring the U.S. Court of Appeals for the Federal Circuit ruled that the high court’s decision means Judge Susan Robinson of the U.S. District Court for Delaware must reconsider whether Boston Scientific and MFV provided enough proof to withstand Medtronic’s validity challenge.
The appeals court found that Robinson was correct in ruling that MFV’s infringement expert, Dr. Ronald Berger, failed to adequately compare each aspect of the Medtronic devices with the Boston Scientific devices, according to court documents. The Delaware judge was also correct in ruling that "Berger’s report and testimony conclusory and insufficient to show that the products infringe the patents under the doctrine of equivalents," according to the documents.
"Concluding that Dr. Berger was an unreliable infringement expert on this record was not an abuse of discretion," according to the documents. "Having determined that Dr. Berger’s opinion lacked foundation, the district court was correct to conclude that MFV failed to prove literal infringement."
Mirowski wants the Supremes to review the Federal Circuit’s decision, arguing that Medtronic’s claim that Berger’s analysis failed to mention a claim for a sense amplifier wasn’t true.
"Dr. Berger had specifically testified at trial that the sense amplifier was present in Medtronic’s CRT products, and that a number of Medtronic documents supported this testimony," according to a petition for a writ of certiorari filed with the high court August 6. "The Federal Circuit knew from MFV’s briefing on appeal, and Medtronic’s absence of disagreement, that the sense amplifier was not missing at all. "
The long-running dispute concerns patents issued to CRM pioneer Dr. Morton Mower, credited with inventing the technology that ultimately became known as a cardiac resynchronization therapy device. Mirowski Family Ventures owns 2 of the CRT patents, exclusively licensed to Guidant Corp., which Boston Scientific acquired in 2006 for an eyebrow-raising $26 billion.
Medtronic in 1991 entered into a sub-license agreement for the patents with Eli Lilly (NYSE:LLY), which owned Guidant at the time. That agreement gave Medtronic leverage to challenge 1 of the patents, which the company began doing in 2003. Since then the various companies involved have been fighting over the validity of 1 of the MFV patents and over Medtronic’s alleged infringement, going round after round in a series of lower courts.
The lawsuit reached the Supreme Court as a debate over which party bears the burden of proof when a patentee, Boston Scientific, claims infringement by a licensee, Medtronic.