WASHINGTON The U.S. Supreme Court on Wednesday ruled in favor of medical devices maker Medtronic Inc in its dispute with privately owned Mirowski Family Ventures LLC over whether the larger company infringed on Mirowski's patents in making certain pacemakers.
The case stems from Medtronic's decision to ask a judge to rule that some of its pacemakers do not infringe on technology patented by Mirowski and licensed to Boston Scientific as well as Guidant Corp, part of Boston Scientific and Abbott Laboratories.
A court in Delaware ruled for Medtronic, saying that even though Medtronic requested the ruling, or declaratory judgment, it was up to Mirowski to prove infringement. The U.S. Court of Appeals for the Federal Circuit disagreed, saying it was up to Medtronic to prove its case.
The Supreme Court reversed that decision, arguing that the patent holder, in this case Mirowski, ordinarily must prove infringement and that this case was no different.
"We hold that, when a licensee seeks a declaratory judgment against a patentee (patent holder) to establish that there is no infringement, the burden of proving infringement remains with the patentee," the Supreme Court said in a decision written by Justice Stephen Breyer.
The two patents in the case have to do with cardiac resynchronization therapy, a pacemaker that 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.
Medtronic licensed the patents in question, but in 2007, Mirowski Family Ventures claimed Medtronic was developing new products that would also justify royalty payments. Medtronic filed suit, seeking a ruling that it did not need to pay.
Wednesday's decision means that the case will return to lower courts for further proceedings, including a fight over infringement, said Arthur Neustadt, senior partner at Oblon Spivak LLP, who argued for Mirowski at the Supreme Court.
"The burden of proof issue wasn't one of the more significant issues," he said. "Now it goes back to Federal Circuit for other issues to be considered."
The case is Medtronic v Boston Scientific Corp, Guidant Corp, and Mirowski Family Ventures, U.S. Supreme Court, No. 12-1128
(Reporting by Diane Bartz; Editing by Rosalind Krasny, Rosalind Russell and Bernard Orr)