05/07/2014

Medtronic v. Boston Scientific: Burden to Prove Infringement Lies Upon Patentee in Declaratory Judgment Actions


Category: Civil Procedure  
 
 
 
By: Eric Paul Smith, Contributor 
 
TitleMedtronic Inc. v. Boston Scientific Corp., Nos. 2011-1313, 1372 (Fed. Cir. Mar. 11, 2014) (non-precedential).
Issues[1] With respect to literal infringement the issue is . . . whether the district court abused its discretion in concluding that Berger’s report lacked foundation sufficient to deem him a reliable infringement expert." Medtronic at *3. [2] "With respect to infringement under the doctrine of equivalents, [the issue is again whether] Berger's opinion was unreliable." Id. at *4.
Holding
[1] "Concluding that Dr. Berger was an unreliable infringement expert on this record was not an abuse of discretion."
Id. at *4.
[2] "Having excluded Dr. Berger's opinion, the district court was correct to include that MFV failed to prove infringement of the doctrine of equivalents by a preponderance of the evidence"
Id. at *4-5.
 
 
Contributor Note
This case is on remand from the SCOTUS. The SCOTUS opinion is available here.
 
 
 

 
Procedural History"This case is before us on remand from the Supreme Court. In a declaratory judgment action in which the defendant-patentee is precluded from pursuing infringement counterclaims by the continued existence of a license to the plaintiff, we previously held on appeal that the district court in the limited circumstances of this case erred in allocating the burden of persuasion to the patentee and remanded for reconsideration of the infringement question with the burden allocated to the declaratory judgment plaintiff. Medtronic, Inc. v. Boston Scientific Corp., 695 F.3d 1266, 1274–75 (2012) ('Medtronic I'). [T]he Supreme Court reversed with respect to the burden of persuasion, holding that the burden falls on the patentee. Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S.Ct. 843, 850–851 (2014) ('Medtronic II'). The Court then remanded the case to us for further proceedings consistent with its opinion." 
Medtronic at *2.
 
 
 
 
Legal Reasoning (Linn, Prost, Lourie)
Noninfringement
Burden to Prove Infringement Lies Upon Patentees"At the conclusion of a bench trial, the district court 'determined that defendants, as patentees, have the burden to prove infringement.' Medtronic, Inc. v. Boston Scientific Corp., 777 F. Supp. 2d 750, 767 (D. Del. 2011) ('Opinion'). The Supreme Court has now held that the district court was correct in looking to the patentee to carry that burden."
Medtronic at *3.
Literal Infringement"MFV 'relied primarily on [its] burden-shifting view of the case,' in which there was 'no need for Dr. Berger to concentrate on claim elements that Medtronic did not dispute.' [...]  This left the district court the task of reviewing Dr. Berger’s report for the sufficiency of MFV’s infringement analysis in order to make an infringement determination based on the appropriate evidence. In reviewing Berger’s report, the district court selected his analysis of claim 15 of the ’987 patent 'as an example of the issue at bar.'  [...] The district court was unable to locate any reference to this claim’s 'sense amplifier' limitation and found that '[o]nly vague perfunctory language potentially covers the remaining elements of asserted claims.' [...] Concluding that Dr. Berger was an unreliable infringement expert on this record was not an abuse of discretion. This court agrees with the district court that Medtronic’s noninfringement contentions based on certain elements alleged to be missing from its devices do not relieve Dr. Berger of the requirement to opine on the presence of structure meeting every claim limitation, nor was it incumbent on the district court to scour the record for whatever other evidence may have supported MFV’s infringement position. [...]" 
Id. at *3-4 (internal citations omitted).
Infringement Under the Doctrine of Equivalents"With respect to infringement under the doctrine of equivalents, we again agree with the district court that Berger’s opinion was unreliable. The district court correctly noted that conclusory statements are insufficient to support a verdict finding infringement under the doctrine of equivalents, id. at 769, and that Dr. Berger’s doctrine of equivalents report and testimony failed 'to execute proper doctrine of equivalents analysis' by relying merely on statements that '"[t]he difference would not be substantial at all. The purpose is the same . . . ," or words of a very similar nature,' id. at 770. Having excluded Dr. Berger’s opinion, the district court was correct to conclude that MFV failed to prove infringement of the doctrine of equivalents by a preponderance of the evidence."
Id. at *4-5.
Prior Decision Regarding Medtronic's Cross-Appeal
Prior Holding Undisturbed"The Supreme Court’s decision did not disturb this court’s previous decision on Medtronic’s cross-appeal, which held that the district court erred by restricting the claimed invention to the treatment of congestive heart failure, vacated the determination of no invalidity predicated on the improper claim construction, and remanded for further proceedings. Medtronic I at 1276. This previous decision remains in effect."
Medtronic at *5.
Conclusion
Determination of Noninfringement Affirmed; Determination of No Invalidity Vacated and Remanded"We now affirm the district court’s determination of noninfringement, reiterate our vacatur of the district court’s determination of no invalidity, and remand." Id. at *2. "the judgment of the district court is affirmed in part and vacated in part. The case is remanded for additional proceedings consistent with this opinion and this court’s previous decision in Medtronic I on Medtronic’s cross-appeal." Id. at *5.
 
 
 
 
 
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