WASHINGTON Nov 5 The U.S. Supreme Court on
Tuesday heard arguments in a case of warring legal doctrines
raised by a heart pacemaker patent fight between giant medical
devices company Medtronic Inc and privately owned
Mirowski Family Ventures LLC.
The case stems from Medtronic's decision to request a
declaratory judgment that some of its pacemakers do not infringe
on technology patented by Mirowski and licensed to Boston
Scientific and Guidant Corp, part of Boston Scientific
and Abbott Laboratories.
Medtronic licensed the patents in question, but in 2007,
Mirowski Family Ventures claimed Medtronic was developing new
products that would justify royalty payments. Medtronic filed
suit, seeking an adjudication that it did not need to pay.
A court in Delaware said Medtronic was not infringing on the
patents, but the U.S. Court of Appeals for the Federal Circuit
threw out that ruling.
Under legal doctrine, the company which files a lawsuit must
prove its case. In this instance, that is Medtronic. And, under
the same doctrine, a company which claims infringement must
prove that infringement. In this case, that would be Mirowski.
The justices focused most of their energies on Mirowski's
lawyer in an almost one-hour hearing focused on which side bears
the burden of proof, but legal experts declined to guess which
way the court might rule.
"We've said time and again that the burden of proof normally
does not shift. What is different here?" Justice Antonin Scalia
asked Arthur Neustadt, representing Mirowski Family Ventures.
In about five to 10 percent of patent infringement cases,
many of them high stakes cases having to do with expensive
medical devices, a company paying licensing fees will sue the
patent holder, asking for a ruling that they don't infringe, in
order to stop paying royalties, said Daniel Ravicher, director
of the Public Patent Foundation, which seeks to prevent abuse of
the patent system.
Two patents gave rise to the case. Both have to do with
cardiac resynchronization therapy, a pacemaker which detects
when the heart beats out of sync and then emits tiny shocks of
electricity to correct its rhythm. It is used to treat
congestive heart failure.
But the Supreme Court case is not about patent infringement.
Instead, the court is attempting to decide which of the two
legal doctrines should apply in an instance where a company sues
another company to seek a declaratory judgment of
"There are other rules on burden of proof," Justice Ruth
Bader Ginsburg said to Neustadt. "For example, the party who has
better access to the information. So it's not as though there is
this a firm rule with no exceptions."
The Supreme Court has a long history of disagreeing with the
Federal Circuit, which specializes in patent appeals.
"The court asked many more questions of Arthur Neustadt and
was far more friendly to Seth Waxman (for Medtronic) in the oral
argument," said Jim Crowne, director of legal affairs for the
American Intellectual Property Law Association.
A ruling is expected by the end of June.
The case is Medtronic v Boston Scientific Corp, Guidant
Corp, and Mirowski Family Ventures, U.S. Supreme Court, No.