US Supreme Court to hear oral arguments in Medtronic v Boston Scientific
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

US Supreme Court to hear oral arguments in Medtronic v Boston Scientific

The US Supreme Court will hear oral arguments today in a case which may shed light on who has the burden of proof when a patent licensee is accused of infringing the patent.

In Medtronic v Boston Scientific, the court will consider whether a licensee challenging a declaratory judgment must demonstrate that its product does not infringe, or whether the patent holder must prove there was infringement.

The case concerns a device manufactured by Medtronic which treats heart failure, known as cardiac resynchronisation therapy (CRT). The patent is owned by Mirowski Family Ventures, which licensed it to another company called Guidant. In 1991, Medtronic sublicensed the patent to Eli Lilly, which had taken over from Guidant as the party-in-interest.

In 2007, Mirowski claimed several Medtronic products infringed the patents. Medtronic sued for a declaratory judgment of non-infringement.

In all other patent litigation, including other declaratory judgments, the burden of proving infringement is on the patent owner. But in September last year, the Federal Circuit ruled that Medtronic had the burden of proving it did not infringe, because it had brought the action for a declaratory judgment and because it was the licensee.

The Federal Circuit said that since the only remedy sought by Medtronic was having a court declare the products in question to be non-infringing, Medtronic should bear the burden of proving it is entitled to such relief.

“A contrary result would allow licensees to use MedImmune’s shield as a sword—haling licensors into court and forcing them to assert and prove what had already been resolved by license,” wrote Judge Richard Linn on behalf of the panel.

The decision overturned a ruling by the District Court for the District of Delaware, which upheld the validity of the patents but concluded that Medtronic did not infringe.

Medtronic appealed to the Supreme Court in March this year, and the court agreed to hear the case in May.

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article