Medtronic, Inc. v. Boston Scientific Corp.
777 F. Supp. 2d 750
D. Del.2011Background
- Medtronic sued for declaratory judgment of noninfringement and invalidity of the reissue patents RE 38,119 and RE 39,897, against BSC, Guidant, and MFV.
- The reissues derive from the '688 patent and cover bi-ventricular pacing to improve hemodynamic efficiency in heart failure.
- The Litigation Tolling Agreement and a DJ Suspension Period framed timing for challenging infringement; a final DJ action was filed under the LTA.
- The court held a Markman hearing; a bench trial addressed validity, enforceability, and infringement of the reissue patents.
- Accused products are CRT devices (InSync family and related models) with varying configurations; some lack defibrillation or separate sensing/pacing for dual leads.
- The court concluded defendants did not prove infringement, invalidity, or unenforceability by clear and convincing evidence, and entered judgment for Medtronic on noninfringement while upholding validity.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the accused devices literally infringe the '119/'897 claims | Medtronic contends each asserted claim is read on the accused devices. | Defendants argue noninfringement due to claim limitations not found in the products. | No literal infringement found |
| Whether the accused products infringe under doctrine of equivalents | Berger asserts equivalence for each limitation. | Defendants contend lack of substantial identity for function/way/result. | No infringement under doctrine of equivalents |
| Whether the asserted claims are invalid as anticipated or obvious | Silva, Tyers, Gibson, Curtiss cited as anticipatory/obvious references. | Defendants argue combination analyses and teachings teach the claims were obvious. | Claims not anticipated or proven obvious by clear and convincing evidence |
| Whether prosecution laches bars enforcement of the reissue patents | Symbol guidance shows improper delay in prosecution and market evolution harmed enforcement. | Delays were reasonable; prosecution history and PTO actions justify continuations. | Prosecution laches not proven; patents enforceable |
| Who bears the burden of proof on infringement | Plaintiff argues standard burden on patentee shifts due to LTA. | Burden always on patentee; defense bears no burden to map every element. | Burden remains on patentee; plaintiff failed to prove infringement |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (claim construction is a matter of law)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (intrinsic evidence governs claim construction; specification is highly relevant)
- Bell Commc'ns Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615 (Fed. Cir. 1995) (preamble limitations may be limiting or not depending on context)
- In re Paoli R.R. Yard PCB Litig., 35 F.3d 717 (3d Cir. 1994) (reliability and reasonable reliance for expert testimony under Daubert-like standards)
- Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251 (Fed. Cir. 1989) (prevailed on limiting language in claims; preamble as limitation sometimes)
- Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259 (Fed. Cir. 1999) (sustain functional equivalence analysis for means-plus-function claims)
- Continental Can Co. USA Inc. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991) (inherent anticipation—limitations must be necessarily present in prior art)
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (rationales to combine references; common sense governs obviousness)
- Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569 (Fed. Cir. 1991) (principles on burden shifting and evidence for infringement)
- Lear Siegler, Inc. v. Sealy Mattress Co., 873 F.2d 1422 (Fed. Cir. 1989) (substantial identity required for doctrine of equivalents; Graver Tank framework)