The case, Medtronic v Boston Scientific, concerns patents relating to a device made by Medtronic known as cardiac resynchronization therapy (CRT). The equipment tracks the patient’s heartbeat to ensure both the right and left ventricles contract simultaneously, and administers electric shocks to restore the proper balance if they get out of sync.
The patents are owned by Mirowski Family Ventures, which licensed them exclusively to Natick, Massachusetts-based Boston Scientific.
The companies agreed that Medtronic would license the patents and pay royalties if it produced any new products which used the technology covered by them.
In 2007, Mirowski alleged that new products Medtronic was developing qualified for royalty fees.
Medtronic subsequently sued, seeking a declaratory judgment that it had not infringed the patents, US reissue patents RE38,119 and RE39,897. Medtronic claims that the onus falls on the patent owner to prove infringement.
A Delaware court ruled that Medtronic was not infringing, but the Federal Circuit overturned the decision in September 2012, concluding that the onus was on Medtronic to prove that it hadn’t infringed.
Usually, the burden of proving infringement falls to the patent holder. But the Federal Circuit reversed this approach, deciding instead to shift the burden to Medtronic because the Fridley-based company was a licensee seeking a declaratory judgment of non-infringement.
The Supreme Court will now review whether the Federal Circuit’s decision to shift the burden was correct. Medtronic claims the appellate court’s ruling creates a loophole allowing patent owners a risk-free way to increase the scope of their licenses to cover new products.
Medtronic has so far been represented by Robins Kaplan Miller & Ciresi in the case and Mirowski has been represented by Oblon Spivak McClelland Maier & Neustadt.
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