A federal appeals court today reconsidered a lawsuit between Medtronic (NYSE:MDT) and Boston Scientific (NYSE:BSX) in light of the U.S. Supreme Court’s decision this year that Boston Scientific bears the burden of proof concerning a patent it licenses from Mirowski Family Ventures.
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.
Today 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."
But the Supreme Court’s decision did not affect the Federal Circuit’s prior ruling that Robinson "erred by restricting the claimed invention to the treatment of congestive heart failure," remanding the case to Delaware for reconsideration.
The long-running dispute concerns fundamental CRT technology covered 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. The 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.
Robinson ruled in April 2011 that the burden rested on the patentee, and in September 2012 Federal Circuit Judges Richard Linn, Alan Lourie and Sharon Prost agreed, concluding that a lower court had mistakenly put the burden of proof on Medtronic because it "disturbed the status quo" with its lawsuit.
In April 2013 the U.S. Solicitor General filed an amicus curiae brief that effectively backed Medtronic, arguing that a lower court ruled incorrectly that Medtronic bears the burden of proof in demonstrating that its products do not infringe on the patents in question. The patent holder should always bear that responsibility, according to the brief.