Supreme Court to Hear Medtronic v. Boston Scientific

On May 20, 2013, the United States Supreme Court granted cert. in Medtronic v. Boston Scientific, a case that will answer whether the licensee in a declaratory judgment challenge bears the burden of proving that the alleged non-infringing product does not infringe, or whether the responding patentee must prove infringement. To read the Federal Circuit decision in the case, click here.

The Supreme Court explained the question presented as follows:

In Medlmmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007), this Court ruled that a patent licensee that believes that its products do not infringe the patent and accordingly are not subject to royalty payments is “not required … to break or terminate its … license agreement before seeking a declaratory judgment in federal court that the underlying patent is … not infringed.”

The question presented is whether, in such a declaratory judgment action brought by a licensee under MedImmune, the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement.

Five Tips for Getting Patent Claims Indemnified

R. David Donoghue, Partner at Holland & Knight and Practice Center Contributor, recently launched the Retail Patent Litigation blog.  In describing the blog, Donoghue writes, “Though patent litigation is relatively new to many retailers, it is a significant and growing concern for all retailers, as well as the members of the retail supply chain.  Retail Patent Litigation is a guide to help retailers understand patent litigation and how to effectively and creatively drive their individual cases to positive resolution.”  In this article, he offers five steps for ensuring your best indemnification outcomes.

Indemnification is a key component of most retail patent litigation.  Whether the accused technology is internet-based or focused on a product, there is almost always an indemnitor somewhere in the supply chain.  And indemnification can be a $1M+ responsibility.  For what is often a seven-figure decision, many companies are surprisingly haphazard about indemnification.  Here are five simple steps for ensuring your best indemnification outcomes:

  1. Research Accusations. The first thing you want to do is understand the scope of plaintiff’s claims.  This is a critical step in knowing exactly who may have indemnification obligations.  Often the patentee will even give you a brief presentation, if they have not provided claim charts, detailing its infringement allegations.  Once you understand the scope of the accusations the best you can, determine which of your vendors might be implicated; cast a wide net in the first instance. (more…)

How The Sausage Is Made

Written by Brandon Baum of Baum Legal and Practice Center Contributor.

You often hear that the key to being a patent trial lawyer is the ability to master complex technical concepts and communicate them to lay jurors. To comfortably act as a translator between the hard science of technology and the soft art of human understanding and common sense. The reality, however, is not quite so impressive.

Take, for example, this closing argument from the i4i vs. Microsoft case. What follows is the entirety of i4i’s discussion of infringement in its initial closing argument: