Tuesday, September 18, 2012

CAFC finds fault with decision of Judge Robinson of D. Del.

In the case Medtronic v. Boston Scientific , the CAFC vacated a decision by Judge Sue Robinson of D. Delaware:

The district court entered judgment of noninfringement in favor of Medtronic and judgment of validity and enforceability in favor of MFV. Medtronic, Inc. v. Boston Scientific Corp., No. 07- CV-0823 (D. Del. Mar. 30, 2011). MFV appeals the district court’s judgment of noninfringement and Medtronic cross appeals the district court’s claim construction on which its judgment of validity is based.1 Because the district court relied on a legally incorrect allocation of the burden of proof to find noninfringement in the limited circumstances of this case and incorrectly construed the claim terms in question, this court vacates and remands.

The CAFC noted:

The question before us arises as a consequence of the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). In MedImmune the Court found declaratory judgment jurisdiction notwithstanding the fact that the declaratory judgment plaintiff licensee continued to make royalty payments pursuant to a li- cense. The Court reasoned that a licensee should not be forced to cease royalty payments and risk infringement liability before the licensee can challenge the extent of coverage of the license. MedImmune, 549 U.S. at 134. Thus, MedImmune provided licensees with a shield from the economic consequences of challenging their licensors’ patents while enabling those licensees to file declaratory judgment suits to clarify the rights and obligations of the parties under their license agreements. This case re- quires us to determine the proper allocation of the burden of persuasion in the post-MedImmune world, under cir- cumstances in which a declaratory judgment plaintiff licensee seeks a judicial decree absolving it of its respon- sibilities under its license while at the same time the declaratory judgment defendant is foreclosed from counterclaiming for infringement by the continued exis- tence of that license.

Generally, the party seeking relief bears the burden of proving the allegations in his complaint. See Schaffer ex rel. Schaffer v. Weast, 546 U.S. 49, 56-57 (2005). “Perhaps the broadest and most accepted idea is that the person who seeks court action should justify the request . . . .” Schaffer, 546 U.S. at 56 (quoting C. Mueller & L. Kirkpatrick, Evidence § 3.1, p. 104 (3d ed. 2003)). “The burdens of pleading and proof with regard to most facts have been and should be assigned to the plaintiff who generally seeks to change the present state of affairs and who therefore naturally should be expected to bear the risk of failure of proof or persuasion.” Id. (quoting 2 J. Strong, McCormick on Evidence § 337, p. 412 (5th ed. 1999)).


It is, of course, well settled that a patentee who files a complaint or counterclaim alleging patent infringement bears the burden of proving that infringement. See Under Sea Indus., 833 F.2d at 1557; In re Tech. Licensing Corp., 423 F.3d 1286, 1288-89 (Fed. Cir. 2005); see also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2007); Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991). In the absence of a license, this court has recognized “that when the same patent is at issue in an action for declaration of non-infringement, a counterclaim for patent infringement is compulsory and if not made is deemed waived.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 802 (Fed. Cir. 1999).

The substantive burden of proof normally does not shift simply because the party seeking relief is a counter- claiming defendant in a declaratory judgment action. See In re Tech. Licensing Corp., 423 F.3d at 1288-89 (citing In re Lockwood, 50 F.3d 966, 976 (Fed. Cir. 1995) and recog- nizing that a declaratory judgment action of invalidity with an infringement counterclaim is nothing more than an inverted infringement suit); Ranbaxy Pharms. Inc. v. Apotex, Inc., 350 F.3d 1235, 1237, 39-40 (Fed. Cir. 2003) (requiring patentee seeking preliminary injunction on infringement counterclaim to show inter alia a likelihood of proving infringement).

To the point:

In contrast, regarding the patents at issue here, MFV seeks nothing more than to be discharged from the suit and be permitted to continue the quiet enjoyment of its contract.2 In other words, it is Medtronic and not MFV that is asking the court to disturb the status quo ante and to relieve it from a royalty obligation it believes it does not bear. Consistent with the above, for the court to disturb the status quo ante, Medtronic must present evidence showing that it is entitled to such relief. If neither party introduced any evidence regarding infringement or noninfringement there is no principled reason why Medtronic should receive the declaration of noninfringement it seeks.

This analysis is fully consistent with other areas of the law.

As to claim construction:

Rather, claim terms should generally be given their ordinary and customary meaning unless “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee dis- avows the full scope of a claim term either in the specifi- cation or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term . . . .’” Id. (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). And “[w]here the specifica- tion makes clear that the invention does not include a particular feature, that feature is deemed to be out- side . . . the patent,” even if the terms might otherwise be broad enough to cover that feature. Id. at 1366 (internal citation omitted).

Here, the district court did nothing more than append the limitation “for the treatment of congestive heart failure,” onto the ends of the disputed claim terms. Opinion at 12-14. This unquestionably added a limitation. This would only have been proper if the patentee specifi- cally defined the terms to include that limitation, or disavowed their otherwise broad scope. While the specifi- cation explains the use of the invention to treat congestive heart failure, it also discloses the invention’s value in treating other diseases. See, e.g., RE’119 Patent col. 3 ll. 13-15 (“an objective of the present invention is to . . . [treat] a heart experiencing a conduction defi- ciency.”).


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