Medtronic Wins Appeals Reversal after Supreme Court Ruling

No one should have been surprised when the latest episode of the precendent-setting Medtronic v. Mirowski defibrillator patent lawsuit played out in the U.S. Court of Appeals for the Federal Circuit.

Previously in the patent cases, Mirowski Family Ventures LLC (MFV), the owner of the patents, had notified Medtronic that it thought Medtronic was infringing on the patents that MFV had licensed to Boston Scientific, among others. Boston Scientific had then sublicensed the patents in question to Medtronic. According to Reuters, in 2007 MFV claimed Medtronic was developing new products that would also justify royalty payments. Medtronic went to court, seeking a declaratory judgment ruling that it did not need to pay

Judge Susan Robinson of the U.S. District Court for Delaware ruled that it was up to MFV and Boston Scientific to prove infringement, which she said they hadn't. On appeal, the U.S. Court of Appeals for the Federal Circuit, which hears all patent appeals, reversed that, saying that because Medtronic was the plaintiff it was up to them to prove their case.

Then, on January 22, the U.S. Supreme Court said that Robinson was right; that it is always up to the patent holder to prove infringement. The opinion established that when a licensee such as Medtronic seeks a court judgment over whether a product is in fact infringing on a patent, it is still up to the patent holder (in this case Mirowski) to prove that the patent has been infringed.

In the March 11 installment of the story, the appeals court acted on the Supreme Court's ruling and reversed itself on that aspect of the case. As Boston Scientific and MFV had failed to prove infringement as the district court had previously determined, that part of the case was let stand.

However, the appeals court also reiterated its opinion that the district court had "incorrectly construed the claim terms in question" and therefore remanded that question of "reconsideration of the claims' validity in light of the correct constructions" back to Judge Robinson's district court for further proceedings.

It's an old adage that you can't prove a negative. Yet this is what Medtronic seems to have done, legally at least, in part.

On a side note, Mirowski Family Ventures is related to the late pioneering physician Michel Mirowski, who was part of the team that developed the first ICD. MPMN recently interviewed Mir Imran, who also part of the group, about lessons learned from his experiences developing the device in the early 1980s.

Stephen Levy is a contributor to Qmed and MPMN.