NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

MEDTRONIC INC.,

Plaintiff-Cross-Appellant,

v.

BOSTON SCIENTIFIC CORPORATION AND

GUIDANT CORPORATION,

Defendants,

AND

MIROWSKI FAMILY VENTURES, LLC,

Defendant-Appellant.

______________________ 

2011-1313, -1372

______________________ 

Appeals from the United States District Court for the 

District of Delaware in No. 07-CV-0823, Judge Sue L. 

Robinson.

______________________ 

Decided: March 11, 2014

______________________ 

MARTIN R. LUECK, Robins, Kaplan, Miller & Ciresi 

L.L.P., of Minneapolis, Minnesota, for plaintiff-crossappellant. With him on the brief were JAN M. CONLIN and 

STACIE E. OBERTS. 
2 MEDTRONIC INC. v. BOSTON SCIENTIFIC CORPORATION

ARTHUR I. NEUSTADT, Oblon, Spivak, McClelland, 

Maier & Neustadt, LLP, of Alexandria, Virginia, for 

defendant-appellant. With him on the brief were THOMAS 

J. FISHER and JOHN F. PRESPER. 

______________________ 

Before LOURIE, LINN, and PROST, Circuit Judges.

LINN, Circuit Judge

This case is before us on remand from the Supreme 

Court. In a declaratory judgment action in which the 

defendant-patentee is precluded from pursuing infringement counterclaims by the continued existence of a license to the plaintiff, we previously held on appeal that 

the district court in the limited circumstances of this case

erred in allocating the burden of persuasion to the patentee and remanded for reconsideration of the infringement question with the burden allocated to the 

declaratory judgment plaintiff. Medtronic, Inc. v. Boston 

Scientific Corp., 695 F.3d 1266, 1274–75 (2012) (“Medtronic I”). On cross-appeal, we held that the district court 

incorrectly construed the claim terms in question and 

remanded for reconsideration of the claims’ validity in 

light of the correct constructions. Id. at 1275–76. Without reviewing or disturbing this court’s claim construction

ruling, the Supreme Court reversed with respect to the 

burden of persuasion, holding that the burden falls on the 

patentee. Medtronic, Inc. v. Mirowski Family Ventures, 

LLC, 134 S.Ct. 843, 850–851 (2014) (“Medtronic II”). The 

Court then remanded the case to us for further proceedings consistent with its opinion. We now affirm the

district court’s determination of noninfringement, reiterate our vacatur of the district court’s determination of no 

invalidity, and remand.
MEDTRONIC INC. v. BOSTON SCIENTIFIC CORPORATION 3

I. DECISION ON NONINFRINGEMENT

The facts of this case were recited in detail in this 

court’s previous opinion and need not be repeated. Medtronic I, 695 F.3d at 1269–71. At the district court, Medtronic served the report of its noninfringement expert, Dr. 

Charles Love (“Love”), and MFV subsequently served the 

report of its infringement expert, Dr. Ronald Berger 

(“Berger”). Berger’s report largely was responsive to 

Love’s report, and Berger admitted that he did not expressly map the Medtronic products in question to every 

limitation of the relevant claims. Medtronic, Inc. v. 

Boston Scientific Corp., 777 F. Supp. 2d 750, 768–69 (D.

Del. 2011) (“Opinion”). 

At the conclusion of a bench trial, the district court 

“determined that defendants, as patentees, have the 

burden to prove infringement.” Id. at 767. The Supreme 

Court has now held that the district court was correct in 

looking to the patentee to carry that burden. In assessing 

whether the patentee carried its burden, the district court 

found that Berger’s infringement opinions lacked sufficient foundation because of his failure to consider “each 

limitation of each asserted claim in comparison to each 

accused product before rendering his infringement opinions,” and that MFV “failed to prove literal infringement 

by a preponderance of the evidence.” Id. at 769. The 

court also found Berger’s report and testimony conclusory 

and insufficient to show that the products infringe the 

patents under the doctrine of equivalents. Id. at 769–70. 

With respect to literal infringement, the issue is not 

whether Dr. Berger’s report mentions a “sense amplifier” 

in some capacity in his report, but rather whether the 

district court abused its discretion in concluding that 

Berger’s report lacked foundation sufficient to deem him a 

reliable infringement expert. MFV “relied primarily on 

[its] burden-shifting view of the case,” in which there was 

“no need for Dr. Berger to concentrate on claim elements
4 MEDTRONIC INC. v. BOSTON SCIENTIFIC CORPORATION

that Medtronic did not dispute.” Opinion at 767, 767 

n.10. This left the district court the task of reviewing Dr. 

Berger’s report for the sufficiency of MFV’s infringement 

analysis in order to make an infringement determination 

based on the appropriate evidence. In reviewing Berger’s 

report, the district court selected his analysis of claim 15 

of the ’987 patent “as an example of the issue at bar.” Id.

at 768. The district court was unable to locate any reference to this claim’s “sense amplifier” limitation and found

that “[o]nly vague perfunctory language potentially covers 

the remaining elements of asserted claims.” Id. at 769

(emphasis added). Concluding that Dr. Berger was an 

unreliable infringement expert on this record was not an 

abuse of discretion. 

This court agrees with the district court that Medtronic’s noninfringement contentions based on certain 

elements alleged to be missing from its devices do not 

relieve Dr. Berger of the requirement to opine on the 

presence of structure meeting every claim limitation, nor 

was it incumbent on the district court to scour the record 

for whatever other evidence may have supported MFV’s 

infringement position. Id. Having determined that Dr. 

Berger’s opinion lacked foundation, the district court was 

correct to conclude that MFV failed to prove literal infringement by a preponderance of the evidence. Id. 

With respect to infringement under the doctrine of 

equivalents, we again agree with the district court that 

Berger’s opinion was unreliable. The district court correctly noted that conclusory statements are insufficient to 

support a verdict finding infringement under the doctrine 

of equivalents, id. at 769, and that Dr. Berger’s doctrine of 

equivalents report and testimony failed “to execute proper 

doctrine of equivalents analysis” by relying merely on 

statements that “‘[t]he difference would not be substantial 

at all. The purpose is the same . . . ,’ or words of a very 

similar nature,” id. at 770. Having excluded Dr. Berger’s 

opinion, the district court was correct to conclude that 
MEDTRONIC INC. v. BOSTON SCIENTIFIC CORPORATION 5

MFV failed to prove infringement of the doctrine of equivalents by a preponderance of the evidence. For these 

reasons, we affirm the district court’s noninfringement 

decision. 

II. DECISION ON MEDTRONIC’S CROSS-APPEAL

The Supreme Court’s decision did not disturb this 

court’s previous decision on Medtronic’s cross-appeal, 

which held that the district court erred by restricting the 

claimed invention to the treatment of congestive heart 

failure, vacated the determination of no invalidity predicated on the improper claim construction, and remanded 

for further proceedings. Medtronic I at 1276. This previous decision remains in effect.

III. CONCLUSION

For the foregoing reasons, the judgment of the district 

court is affirmed in part and vacated in part. The case is 

remanded for additional proceedings consistent with this 

opinion and this court’s previous decision in Medtronic I 

on Medtronic’s cross-appeal.

AFFIRMED-IN-PART, VACATED-IN-PART AND 

REMANDED

IV. COSTS

Each party to bear its own costs.