11/12/2012 10:47:11 AM EST
Medtronic v. Boston Scientific: A Cautionary Tale for Patent Licensees
By Nisha Patel*
The U.S. Court of Appeals for the Federal Circuit decided Medtronic v. Boston Scientific [enhanced version available to lexis.com subscribers] - a decision having a potentially significant effect on the patent licensing landscape because of its holding that in some situations the potential infringer bears the burden of proving non-infringement. The Federal Circuit identified specific circumstances in which a licensee seeking declaratory judgment of non-infringement bears the burden of proof.
The Medtronic decision arose as a result of the Supreme Court's decision in MedImmune v. Genentech [enhanced version available to lexis.com subscribers]. In MedImmune, the Supreme Court held that a patent licensee in good standing may challenge the validity of a patent via a declaratory judgment suit. The Supreme Court reasoned that a patent licensee should be allowed to challenge the scope of a license without terminating royalty fees under the license and risking infringement liability. In other words, a licensee in compliance with the terms of a license may nevertheless seek declaratory judgment relief to clarify the extent of the license.
Courts have generally agreed that in the absence of a license agreement, a counterclaim for patent infringement is compulsory in a declaratory judgment suit, whether the declaratory judgment suit is based on non-infringement or invalidity.
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*Nisha Patel practices Intellectual Property law with an emphasis on patent matters at the Minneapolis office of Merchant & Gould. Her practice focuses on assisting with domestic and international patent prosecution in technology areas related to diverse electric, electrical, and mechanical fields. Specifically, Nisha has experience with technological fields including telecommunications, computer architecture, medical devices, power distribution systems, fiber optics, and semiconductor microfabrication. Her transactional and prosecution related experiences include preparing patent applications and responses to Office Actions, conducting examiner interviews, analyzing patentability, and performing prior art searches.
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