Remember playing the game hot potato as a kid? Well, this patent infringement case set for oral argument in November before the Supreme Court is very similar -- except, instead of a hot potato, the parties want to hand off the burden of proof.
Medtronic Inc. v. Boston Scientific Corp., LLC. -- Background
This case involves patents for a cardiac resynchronization therapy ("CRT") device that sends shocks to the heart to restore a normal heart rhythm, according to Reuters. MVF, the patent holders sub-licensed the CRT patents to Medtronic. Pursuant to the licensing agreement, Medtronic filed a declaratory judgment action seeking a determination that its use was noninfringing. Notably, also pursuant to the agreement, MVF was precluded from counterclaiming for infringement.
At trial, the district court noted longstanding law that requires a patentee to prove infringement, and granted declaratory judgment of no infringement under the doctrine of equivalents and no literal infringement. MVF appealed the declaratory judgment and Medtronic appealed the court's construction ruling.
Medtronic Inc. v. Boston Scientific Corp., LLC. -- Legal Analysis
On appeal, the Federal Circuit had to determine who had the burden of proof. MVF argued that Medtronic, as the declaratory judgment plaintiff have the burden of proving noninfringement. Medtronic responded with the general rule that patentees have the burden of proving infringement.
The question of burden of proof arose after what the Federal Circuit called the "post- MedImmune world," a Supreme Court decision where a licensee seeks a declaration of noninfringement and where the defendant is precluded from counterclaiming with a claim of infringement. Because of the unique circumstances of this type of situation, the Federal Circuit held that "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."
It's unclear whether the Supreme Court will agree with the Federal Circuit's analysis, though we'll probably have a better idea once oral arguments occur on November 5, 2013.