Obtained Complete Victory for Medical Device Manufacturer in Defense of $100M+ Royalty Claims for Alleged Infringement of Patents Relating to Cardiac Resynchronization

Medtronic Inc v. Boston Scientific Corporation et al; MIROWSKI FAMILY VENTURES, LLC v. MEDTRONIC, INC., ET AL. (D. Del.)

Robins Kaplan LLP obtained a judgment of non-infringement in favor of medical device manufacturer Medtronic in a declaratory judgment suit relating to technology used in cardiac resynchronization therapy. Medtronic filed suit after Defendants claimed royalties in excess of $100 million, alleging that certain Medtronic devices infringed patents licensed from Mirowski Family Ventures (“Mirowski”). After a bench trial, a federal judge in Delaware held that Mirowski, as the patentee, bore the burden of proving infringement and failed to meet that burden, entering a judgment of non-infringement on behalf of Medtronic.

Defendant Mirowski appealed on the merits and the Federal Circuit reversed the district court decision on the burden of proof issue and held that Medtronic, as the licensee, bore the burden of proving non-infringement. Medtronic filed a petition for certiorari to the U.S. Supreme Court. The Supreme Court granted the petition and reversed the Federal Circuit, holding that the patentee always bears the burden of proof, even where the licensor cannot counterclaim for infringement because of the existence of a license agreement. On remand from the Supreme Court, the Federal Circuit affirmed the district court’s finding of non-infringement for Medtronic, awarding Medtronic a complete victory in the case, including an award for attorneys’ fees.

The district court subsequently awarded Medtronic attorneys’ fees under a fee shifting provision in the license agreement. Defendant Mirowski appealed the fee award, which the Federal Circuit affirmed. Defendant filed a petition for certiorari to the U.S. Supreme Court, which the firm successfully opposed on Medtronic’s behalf.