Mirowski Family Ventures, LLC v. Boston Scientific Corp.
958 F. Supp. 2d 1009
S.D. Ind.2013Background
- Mirowski owned patents covering ICDs and granted Boston Scientific an exclusive license (1973) obligating royalty payments and permitting Boston Scientific to sue alleged infringers; proceeds split equally.
- A 1996 suit (Indiana Litigation) against St. Jude led to mixed trial outcomes; district court later found the '288 and '472 patents invalid, but the Federal Circuit reversed invalidity of claim 4 of the '288 patent on appeal.
- After various settlements and a 2004 Agreement resolving royalty disputes, Boston Scientific paid Mirowski roughly $6.6 million, claiming it owed royalties on only 10% of U.S. sales; Mirowski disputed adequacy of payment.
- Boston Scientific sued for declaratory relief (2011), asking the court to rule it did not infringe the '288 patent, that its payments satisfied royalty obligations, and that it did not breach contract in settling with St. Jude.
- Following the Supreme Court’s decision in Gunn v. Minton, the district court reexamined subject-matter jurisdiction and ordered briefing; court concluded a genuine jurisdictional dispute existed and ultimately dismissed for lack of federal-question jurisdiction.
Issues
| Issue | Plaintiff's Argument (Mirowski) | Defendant's Argument (Boston Scientific) | Held |
|---|---|---|---|
| Whether the court has federal-question jurisdiction because Mirowski could have brought a patent-infringement suit against Boston Scientific | Mirowski: could have treated Boston Scientific as an infringer (e.g., by setting aside the 2004 Agreement) and thus a federal patent claim was available | Boston Scientific: license authorized the sales at issue; Mirowski never terminated the license, so infringement suit would be frivolous | Held: No — license remained in effect during the relevant sales; Mirowski could not have asserted a colorable infringement claim, so no federal jurisdiction on that ground |
| Whether the case fits Gunn’s ‘special and small category’ (state-law claim necessarily raising a substantial federal issue) | Mirowski: resolution necessarily requires construing patent scope (which devices are covered by claim 4) and thus federal jurisdiction under Gunn/Grable | Boston Scientific: patent issues are backward-looking and have no substantial federal interest beyond these parties; patent expired so no future effect | Held: No — although a federal issue is necessarily raised and actually disputed, it is not "substantial" in the Gunn sense (purely backward-looking with no effect beyond the parties), so federal jurisdiction is absent |
| Whether prior district-court invalidity or the 2004 Agreement retroactively nullified Boston Scientific’s licensee status for the sales at issue | Mirowski: district-court invalidity meant those sales were not covered by license; reversal would make Boston Scientific an infringer during appeal period | Boston Scientific: a district-court invalidity pending appeal does not nullify the license; only termination by Mirowski could convert licensee to infringer | Held: License did not terminate retroactively; 2004 Agreement altered payment obligations but did not convert authorized sales into infringement |
| Whether the case should be retained to avoid inconsistent patent rulings or because patent construction would be important to federal system | Mirowski: patent construction is central and could implicate federal interests | Boston Scientific: no prospect of conflicting federal/state judgments or impact on future conduct because patent expired; issue is hypothetical | Held: No — absent any broader federal interest or future effect, retaining the case would disrupt the federal-state balance; dismissal for lack of subject-matter jurisdiction affirmed |
Key Cases Cited
- Gunn v. Minton, 133 S. Ct. 1059 (U.S. 2013) (clarifies limits on federal jurisdiction for state-law claims that raise patent issues; sets four-part test for the "special and small category")
- Dow Chem. Co. v. United States, 226 F.3d 1334 (Fed. Cir. 2000) (licensee status persists until injured party elects termination; breach does not automatically convert licensee into infringer)
- Pixton v. B & B Plastics, Inc., 291 F.3d 1324 (Fed. Cir. 2002) (licensee defense does not necessarily defeat federal jurisdiction when plaintiff plausibly alleges termination of the license)
- Forrester Environmental Servs. v. Wheelabrator Techs., Inc., 715 F.3d 1329 (Fed. Cir. 2013) (applies Gunn to hold patent issues not "substantial" where resolution is hypothetical and patents expired or conduct occurred abroad)
- Odell v. F.C. Farnsworth Co., 250 U.S. 501 (U.S. 1919) (historical principle: existence of an unrevoked license precludes an infringement suit)