Medtronic Didn't Infringe BSC Defibrillator IP: Judge

Law360, New York (March 30, 2011) -- A Delaware federal judge on Wednesday sided with Medtronic Inc. in its declaratory judgment suit against Boston Scientific Corp. that it did not infringe two patents for implantable cardiac defibrillators.

Judge Sue Robinson of the U.S. District Court for the District of Delaware affirmed that the two patents held by Mirowski Family Ventures LLC and licensed to Boston Scientific were valid, but found that Medtronic's devices, including its InSync, Concerto, Maximo II and Consulta products, did not violate them.

In the case, Minneapolis-based Medtronic argued that Boston Scientific's expert failed to conduct an appropriate infringement analysis in his report because he did not map every element of each asserted claim against each accused product.

The report covered combinations of 27 claims of the patents asserted against nine accused Medtronic products, but it failed to demonstrate that Boston Scientific's expert considered each limitation of each asserted claim in comparison to each accused product, the judge said.

The judge held that Natick, Mass.-based Boston Scientific was unable to prove literal infringement and also determined that it failed to show the accused products infringed the patents under the doctrine of equivalents.

However, the judge also brushed aside arguments by Medtronic that four alleged prior art references either anticipated or made obvious Boston Scientific's patents.

"Plaintiff's arguments regarding obviousness are less than compelling, attempting only to demonstrate that limitations of the asserted claims can be found as disparate pieces in various combinations of the prior art," Judge Robinson wrote in an opinion.

Medtronic also tried to argue that the patents were unenforceable by reason of prosecution laches, but the judge held that the evidence showed that any delays in prosecution were reasonable.

A spokesman for Medtronic said the company was pleased with the ruling. A representative for Boston Scientific was not immediately available for comment Wednesday.

The patents-in-suit stem from U.S. Patent Number 4,928,688, issued in 1990. Medtronic lodged its complaint in December 2007, seeking declaratory judgment that it did not infringe either the 2003 reissue of the original patent, U.S. Patent Number RE 38,119, or the 2007 continuation of the reissue, U.S. Patent Number RE 39,897, and that both reissue patents were invalid.

The instant suit builds on two decades worth of litigation over the defibrillator and other patents.

Medtronic had agreed to pay royalties on some products as part of a 1991 settlement of other patent issues with drugmaker Eli Lilly & Co., which formed Guidant in 1994. In 2006, Boston Scientific purchased Guidant, which holds the exclusive license for patents from Mirowski - the company formed to hold the rights of inventor Dr. Michel Mirowski's defibrillator patents.

The Lilly settlement also allowed Medtronic to challenge the validity or infringement of the patents through a declaratory judgment action without breaching its license as long as it deposited the royalties due into an escrow account, according to a previous ruling.

Medtronic filed a suit in August 2003 in the District of Delaware that disputed its obligation to make royalty payments to Mirowski Family Ventures and sought to invalidate the '119 patent, which relates to cardiac resynchronization therapy and bi-ventricular pacing therapy.

The Delaware court found that the patent-in-suit was valid, and Medtronic appealed the ruling.

In October 2006, the Federal Circuit upheld the lower court's ruling that the claims on Guidant's patent covering an implantable defibrillator were valid.

The patents-at-issue are U.S. Patent Numbers RE 38,119 and RE 39,897.

Medtronic is represented in the current matter by Connolly Bove Lodge & Hutz LLP and Robins, Kaplan, Miller & Ciresi L.L.P. 

Guidant and Boston Scientific are represented by Finnegan and Richards Layton & Finger PA. Mirowski Family Ventures is represented by Potter Anderson & Corroon LLP and Oblon Spivak McClelland Maier & Neustadt PC.

The case is Medtronic Inc. v. Boston Scientific Corp. et al., case number 1:07-cv-00823, in the U.S. District Court for the District of Delaware.

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