Supreme Court Takes Up Medtronic’s Patent Fight

     WASHINGTON (CN) – Medtronic can head to the Supreme Court to invalidate the patents for the biventricular pacer, a cardiac resynchronization therapy device, the justices said Monday.
     Dr. Morton Mower’s pacer, or CRT device, increases the heart’s efficacy by causing both the patient’s left and right ventricles to contract simultaneously as the heart beats. Mower ultimately patented the CRT device in what are now the RE’119 and RE’897 Patents. Those patents are assigned to Mirowski Family Ventures, which exclusively licenses both patents to Guidant Corp.
     While licensing the Re’119 patent from Guidant’s predecessor, Medtronic began paying royalties into escrow as it challenged the patent’s validity.
     Medtronic then filed separate federal complaints against Guidant; its parent, Boston Scientific; and Mirowski Family Ventures (MFV).
     After a 2010 bench trial, a federal judge in Delaware entered a judgment of noninfringement in favor of Medtronic. It also entered a judgment of validity and enforceability in favor of MFV.
     Both Medtronic and MFV appealed, leading the Federal Circuit to vacate the lower court’s decision in September 2012.
     The three-judge panel noted that the District Court had improperly put the burden of proof on MFV.
     “The one claim for relief sought in this case is the claim Medtronic asserts to be relieved from liability under the license by having a court declare the products in question to be noninfringing,” according to the ruling. “Medtronic is the party seeking this relief and Medtronic must 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. Because the declaratory judgment plaintiff is the only party seeking the aid of the court in the circumstances presented here, that party must bear the burden of persuasion. Therefore, this court holds that in the limited circumstance when an infringement counterclaim by a patentee is foreclosed by the continued existence of a license, a licensee seeking a declaratory judgment of noninfringement and of no consequent liability under the license bears the burden of persuasion.”
     In the 2007 case MedImmune Inc. v. Genentech Inc., the U.S. Supreme Court “provided licensees with a shield from the economic consequences of challenging their licensors’ patents while enabling those licensees to file declaratory judgment suits to clarify the rights and obligations of the parties under their license agreements,” according to the ruling.
     The court said Medtronic could press its invalidity contention based upon the correct claim construction on remand.Per its custom, the U.S. Supreme Court did not issue any comment in granting Medtronic a writ of certiorari Monday.

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