Medtronic Non-Infringement Win Stands, Supreme Court Passes On Appeal

By Jof Enriquez,
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The U.S. Supreme Court refused to review a ruling by a Federal Circuit court that declared that Medtronic did not infringe on implantable defibrillator patents held by Mirowski Family Ventures (MFV), because MFV, as owner of the patents, failed to show proof of infringement.

The justices rejected MFV’s writ of certiorari petition asking to clarify whether a Federal Circuit in Delaware had authority to dismiss MFV’s patent case against Medtronic due to a “non-existent reason,” according to a Law360 report. As is customary, the justices did not explain why they declined MFV’s petition.

The lower court had ruled that MFV was not able to prove that Medtronic had infringed its patents because the opinion of its expert, Ronald Berger, was missing a claim element concerning sense amplifiers.

In its petition, MFV asserted that the missing element was present.

“A party's case cannot be summarily dismissed without consideration of any of its merits unless there is an especially good reason for doing so,” the Law360 report said. “Not only was there no good reason, there was no reason whatsoever, since the district court based its summary dismissal of MFV's infringement case on the supposedly missing sense amplifier, which was not missing at all.”

The case stems from a suit filed by Medtronic that sought a declaratory judgment saying that its new implantable defibrillator devices were not covered by Boston Scientific patents. Boston Scientific originally licensed those patents from MVF.

In January this year, the Supreme Court had unanimously ruled that “the party with the substantive cause of action, that is, the patentee, should have the burden of proof” in a declaratory judgment case, according to Lexology.

“We hold that, when a licensee seeks a declaratory judgment against a patentee to establish that there is no infringement, the burden of proving infringement remains with the patentee,” Justice Breyer wrote in the Supreme Court decision.

This meant that the burden of proof shifted from licensee Medtronic to MFV in substantiating infringement. The Supreme Court ruling reversed a Federal Circuit decision that put the burden on licensees.

MFV represents the estate of Dr. Michel Mirowski, a co-inventor of the implantable cardioverter defibrillator device. It recently won a separate patent suit when a Maryland court ordered Boston Scientific to pay $308 million in damages for violating their licensing deal.