Medtronic Inc. v. Boston Scientific Corp., et al.

Summarized by:

  • Court: U.S. Supreme Court Certiorari Granted
  • Area(s) of Law: Patents
  • Date Filed: May 20, 2013
  • Case #: 12-1128
  • Judge(s)/Court Below: Court Below: 695 F.3d 1266 (Fed. Cir. 2012)
  • Full Text Opinion

Whether the patentee bears the burden of proof in patent infringement case when the patentee is foreclosed from an infringement claim by a license agreement.

Respondent licensed patents for manufacturing of medical devices. Respondent and Petitioner entered a sublicense agreement for several patents. Petitioner, under the sublicense agreement, challenged the validity of Respondent’s patents. As per the sublicense agreement, Petitioner paid royalties into escrow. Eventually, Petitioner and Respondent entered a litigation tolling agreement, which obligated Respondent to inform Petitioner which devices Respondent believed practices its patents. Respondent identified several such devices to Petitioner, but Petitioner disagreed and filed a complaint for declaratory judgment of noninfringement. The license agreement remained valid and thus Respondent could not counterclaim for infringement. The lower court entered judgment of noninfringement in favor of Petitioner and judgment of validity and enforceability in favor of Respondent. Respondent appealed the lower court's judgment of noninfringement and Respondent cross appealed the district court's claim construction. The United States Court of Appeals for the Federal Circuit vacated and remanded because the district court relied on a legally incorrect burden of proof upon the Respondent.

Petitioner appealed and the Supreme Court granted certiorari to decide whether the patentee bears the burden of proof in patent infringement case when the patentee is foreclosed from an infringement claim by a license agreement.


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