BOSTON SCIENTFIC CORPORATION et al v. MIROWSKI FAMILY VENTURES, LLC

Filing 427

ENTRY DISMISSING CASE FOR LACK OF JURISDICTION: For the reasons set forth above, this case must be, and hereby is, DISMISSED for lack of subject matter jurisdiction ***SEE ENTRY FOR ADDITIONAL INFORMATION***. Signed by Judge William T. Lawrence on 7/29/2013.(DW)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
MIROWSKI FAMILY
VENTURES, LLC,
Counterclaimant,
vs.
BOSTON SCIENTIFIC
CORPORATION, et al.,
Counterclaim Defendants.

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ENTRY DISMISSING CASE FOR LACK OF JURISDICTION
As the parties and the Court were gearing up for the trial scheduled in this case, the
United States Supreme Court handed down Gunn v. Minton, 133 S.Ct. 1059 (2013). In a letter
dated February 21, 2013, Boston Scientific brought the decision to the Court’s attention and
suggested that, pursuant to its holding, the Court lacked subject matter jurisdiction over this case.
The following day, Mirowski responded that it believed federal question jurisdiction existed and
urged the Court to hold fast to the trial date.1
After reviewing the parties’ letters and conducting its own preliminary review, the Court
concluded that there was a genuine dispute as to its subject matter jurisdiction over this case.
Accordingly, the Court vacated the trial and ordered formal briefing on the subject. After
reviewing the parties’ briefs, the Court ordered additional briefing. That briefing is now
complete and the Court, being duly advised, rules as follows.2

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The parties letters have been docketed as Docket Nos. 409-1 and 409-2.
Because the Court does not believe that oral argument would aid it in its decision,
Mirowski’s motion for oral argument (Dkt. No. 411) is DENIED. See Local Rule 75(d)(1)(vesting decision to permit oral argument in sole discretion of the Court).
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I. BACKGROUND
This case has its genesis in an exclusive license agreement entered into in 1973 (“License
Agreement”) between the owner of several patents (hereinafter referred to as “Mirowski”)
relating to implantable cardioverter defibrillators (“ICDs”) and a company (hereinafter referred
to as “Boston Scientific”)3 that wished to sell ICDs. The License Agreement required Boston
Scientific to pay Mirowski, among other things: “Three percent (3%) of the net sales, rental and
lease by [Boston Scientific] of Implantable Defibrillators, their parts and components covered
under patent rights.” In addition, the License Agreement gave Boston Scientific the right to bring
infringement suits against others in its name, and further provided that Boston Scientific “shall
have the obligation, subject to mutual agreement between [Boston Scientific and Mirowski] to
bring and conduct suit or actions against any infringer whose annual sales, rentals and leases of
infringing devices exceed $75,000.” Mirowski, in turn, agreed to join as a party plaintiff in any
infringement suit brought by Boston Scientific under the terms of the License Agreement, and
the agreement provided that Mirowski had the right to participate in any such suit. The proceeds
of any successful infringement suit, less all costs and expenses incurred by Boston Scientific,
were to be divided equally between Boston Scientific and Mirowski.
One such suit (hereinafter referred to as the “Indiana Litigation”) was filed in the
Southern District of Indiana in 1996 against St. Jude Medical, Inc., (“St. Jude”) alleging

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In the forty years since the License Agreement was executed, the parties to the
agreement have had various successors. For the sake of simplicity, the Court will refer to them
in their current iterations—Mirowski Family Ventures, LLC (“Mirowski”) is now the owner of
the patents at issue in this case and Boston Scientific Corporation (“Boston Scientific”) is the
successor to the original licensee. Similarly, over the years additional patents—including the
’288 patent relevant to the issue now before the Court—were issued to Mirowski and, by
agreement of the parties, also covered by the License Agreement.
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infringement of two patents, hereinafter referred to as the ’288 patent and the ’472 patent. In
2001, a jury found that St. Jude infringed the ’472 patent
and jointly awarded Boston Scientific and Mirowski $140 million in damages, including a $110
million up-front payment for entry into the ICD market and ongoing royalties of $30 million.
The jury did not award lost profits with regard to the ’472 patent. In addition, the jury found no
infringement of the two claims of the ’288 patent at issue.
In February 13, 2002, the district court entered judgment as a matter of law for St. Jude
on both patents and conditionally granted a new trial for St. Jude as to most issues on which it
did not prevail at trial. Among other things, the court found the ’288 and ’472 patents invalid,
found the ’472 patent not infringed, ordered Boston Scientific to pay St. Jude a sanction of
$300,000 for misconduct related to one of Boston Scientific’s expert witnesses, and ordered
Boston Scientific to pay St. Jude’s costs, including attorneys’ fees, if a retrial became necessary.
Following this ruling, in April 2002, Boston Scientific advised Mirowski that it was
ceasing payment of royalties to Mirowski, citing a provision of the License Agreement that
provided that royalties were “payable only on devices which are covered . . . by one or more
valid claims of a patent application or of an unexpired patent included in the Patent Rights.”
Because the relevant claims of the ’288 patent had been declared invalid by the district court in
the Indiana Litigation, Boston Scientific took the position that it was no longer required to pay
royalties. Mirowski disagreed with Boston Scientific’s interpretation of the License Agreement,
taking the position that royalty payments were still required.
The ’288 patent expired in December 2003.

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In January 2004, Boston Scientific and Mirowski entered into a two-page agreement (the
“2004 Agreement”) to resolve their dispute regarding royalties. The 2004 Agreement provided,
in relevant part:
In the event there is in the [Indiana] Litigation a final non-appealable judgment
that St. Jude infringes a valid claim of the ’288 Patent and that the ’288 Patent is
properly subject to the previously granted patent term extension, [Boston
Scientific] will pay to MIROWSKI a sum equal to all royalties that accrued
pursuant to the License Agreement on products covered by any such claims of the
’288 Patent from the date such royalty payments were suspended to the date of
expiration of the ’288 Patent together with interest at the prime rate as published
in the Wall Street Journal as compounded quarterly from the date payment is due
to the date of payment. Such payment will be made by Boston Scientific within
ninety (90) days after such decision becomes final and not subject to further
appeal.
***
In the event that there is in the [Indiana] Litigation a final non-appealable
judgment that St. Jude does not infringe the ’288 Patent (whether by noninfringement or because an invalid claim cannot be infringed), Boston Scientific
will pay to MIROWSKI fifteen million dollars ($15,000,000) within ninety (90)
days after such decision becomes final and not subject to further appeal.
The 2004 Agreement further provided that Mirowski released Boston Scientific “from any and
all causes of action, claims and demands whatsoever in law or in equity that any Mirowski Party
has, had or may have against [Boston Scientific], based on or arising from the [Indiana
Litigation] or from any non-payment of royalties under patents in the [Indiana Litigation].”
In the meantime, Mirowski and Boston Scientific had appealed the district court’s
invalidity decision with regard to claim 4 of the ’288 patent, which was a method claim. The
Federal Circuit Court of Appeals (“Federal Circuit”) ultimately reversed the district court’s
finding that the ’288 patent was invalid and remanded for a determination of damages. Cardiac
Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348 (Fed. Cir. 2009); cert. denied, 558 U.S.
1115 (2010).

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While the appeal was pending before the Federal Circuit, in July 2006, Boston Scientific
and St. Jude entered into a settlement agreement (“St. Jude Agreement”) that fully resolved four
cases that were pending between the two companies and partially resolved two others, including
the Indiana Litigation and a case pending in Delaware involving another Mirowski patent (“the
Delaware Litigation”). With regard to the Indiana Litigation, Boston Scientific agreed to
withdraw its damages claim for, among other things, lost profits, price erosion, an “up-front”
royalty payment, prejudgment interest, and attorneys’ fees. With regard to the Delaware
Litigation, Boston Scientific withdrew its damages claim for, among other things, lost profits,
price erosion, an “up-front” royalty payment, enhanced damages (i.e., treble damages and/or
attorneys’ fees) and prejudgment interest. Mirowski subsequently agreed to the terms of the
agreement between Boston Scientific and St. Jude with regard to the Indiana Litigation.
However, Mirowski and Boston Scientific entered into a reservation of rights agreement
preserving Mirowski’s claims against Boston Scientific for breach of contract and/or breach of
the 2004 Agreement relating to the St. Jude Agreement.
After the Supreme Court declined to review the Federal Circuit’s ruling, Boston
Scientific, Mirowski, and St. Jude entered into a stipulation of dismissal of the Indiana Litigation
and the case was closed by the district court on May 5, 2010.
Thereafter, Boston Scientific paid Mirowski approximately $6.6 million, asserting that,
under the applicable provision of the 2004 Agreement, it owed Mirowski royalties on only 10%
of its United States sales during the time period covered by the Agreement because only 10% of
the devices it sold practiced the method of claim 4 in the United States and thus were covered by
the ’288 patent. Mirowski objected, contending that Boston Scientific’s payments did not satisfy
its obligation under the 2004 Agreement.

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On May 31, 2011, Boston Scientific filed its “Complaint for Declaratory Judgment”
seeking declaratory judgments that (1) “its ICD products that [did] not perform cardioversion
therapy [did] not infringe the ’288 patent”’ (2) the payments it had made to Mirowski “satisfied
its royalty obligations under the [License Agreement]” and therefore it owed no additional
royalties to Mirowski; and (3) it did not breach any contractual or fiduciary obligations by
entering into the St. Jude Agreement. Complaint at ¶¶ 38, 41, 44.
II. DISCUSSION
The issue before the Court is whether it has subject matter jurisdiction over this case.
Because diversity of citizenship is not present, 4 jurisdiction lies only if this case arises under
federal law. A case may arise under federal law in two ways. “Most directly, a case arises under
federal law when federal law creates the cause of action asserted.” Gunn, 133 S.Ct. at 1064. In
addition, the Supreme Court has recognized a “special and small category of cases” in which
“arising under” jurisdiction lies even though the case involves only claims based on state law.
Id. Mirowski argues that both of these grounds for federal jurisdiction are present in this case.
A. Could Mirowski Have Asserted a Colorable Claim for Patent Infringement?
Federal district courts have exclusive jurisdiction over “any civil action arising under any
Act of Congress relating to patents,” 28 U.S.C. § 1338(a), and Boston Scientific seeks a
declaration that it does not infringe the ’288 patent in its complaint. However,

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Boston Scientific alleged in its complaint that this Court had both federal question
jurisdiction and diversity jurisdiction over this case. In its answer, Mirowski agreed with the
former assertion but disputed the latter, asserting, without elaboration, that the Guidant Plaintiffs
and Mirowski were not citizens of different states. In fact, as the parties have now confirmed in
supplemental jurisdictional statements ordered by the Court, Mirowski is a citizen of Indiana,
Pennsylvania, and Massachusetts, and three of the four Plaintiffs also are citizens of
Massachusetts. Accordingly, the parties agree, as they must, that complete diversity does not
exist.
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[t]o decide whether a declaratory-judgment action comes within federal
jurisdiction, a court must dig below the surface of the complaint and look at the
underlying controversy. If a well-pleaded complaint by the defendant (the
“natural” plaintiff) would have arisen under federal law, then the court has
jurisdiction when the “natural” defendant brings a declaratory-judgment suit.
NewPage Wis. Sys. Inc. v. United Steel Workers Int’l Union, 651 F.3d 775, 777-78 (7th Cir.
2011). This is often referred to as the “mirror-image” approach. Importantly, the question is not
what claims the natural plaintiff would have brought had it filed suit first, but rather what claims
the natural plaintiff could have brought. See, e.g., Household Bank v. JFS Grp., 320 F.3d 1249
(11th Cir. 2003) (fact that natural plaintiffs contended that they did not intend to bring a federal
claim did not divest court of subject matter jurisdiction).
Mirowski has not asserted a claim for patent infringement against Boston Scientific, but
argues that it could have. If this were true, this Court’s jurisdiction over this case would be
secure. Unfortunately, it is not.
Patent infringement is defined in 35 U.S.C. § 271(a) as making, using, selling, or offering
to sell any patented invention “without authority.” The License Agreement authorized Boston
Scientific to make, sell, etc., ICDs covered by the ’288 patent. Therefore, as long as the License
Agreement was in place, any such sales by Boston Scientific could not, as a matter of law,
constitute infringement of the ’288 patent. See, e.g., Milprint, Inc. v. Curwood, Inc., 562 F.2d
418, 420 (7th Cir. 1977) (“[T]he existence of a license precludes the possibility of
infringement.”); Arvin Indus., Inc. v. Berns Air King Corp., 510 F.2d 1070 (7th Cir. 1975)
(same); United Mfg. & Serv. Co. v. Holwin Corp., 187 F.2d 902, 905 (7th Cir. 1951) (“It is also
clear that while the license agreement is still in effect the owner of the patent cannot sue for
infringement. He is limited to the enforcement of his rights and remedies under the license
agreement.”); Metabolite Labs., Inc. v. Laboratory Corp. of Am., 904 F. Supp.2d 1137, 1140 (D.

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Colo. 2006) (“[A] licensee cannot infringe.”); Intel Corp. v. Broadcom Corp., 173 F. Supp.2d
201, 228 (D. Del. 2001) (patent license is essentially a waiver of patent owner’s right to sue
licensee for infringement). This is hardly a new concept; almost a century ago the United States
Supreme Court, in finding no federal question jurisdiction existed in a claim for breach of a
patent license, noted: “Infringement of the patent is not alleged, but, on the contrary, a
completed grant and assignment of legal title to it is pleaded, sufficient on its face, while
unmodified, to disable the plaintiff from maintaining a suit for any infringement subsequent to
the date of such assignment.” Odell v. F.C. Farnsworth Co., 250 U.S. 501, 503 (1919).
Mirowski argues that it nonetheless could have maintained a suit for infringement against
Boston Scientific because it could have chosen to “set[ ] aside the January 28, 2004, Agreement
and treat Boston Scientific as an infringer rather than as a contractual partner.” Mirowski Brief
at 9 (Dkt. No. 410). The problem with this argument is that it ignores the fact that in order to
treat Boston Scientific as an infringer, Mirowski would have had to have terminated the License
Agreement prior to the time the ICD sales at issue were made.5 Mirowski did not. Again,

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In its supplemental submission, Mirowski shifts gears a bit, arguing that because the
License Agreement applied only to ICD sales covered by a valid patent claim, the district court’s
ruling of invalidity in the Indiana Litigation meant that the ICD sales at issue in this case were
not covered by the license; as to those sales, Mirowski argues, Boston Scientific therefore was
not a licensee but rather—as soon as the Federal Circuit reversed the invalidity ruling—an
infringer. If Mirowski’s argument were correct, any licensee—even one who continued to pay
royalties—would lose the protection of its license and become a potential infringer during the
pendency of the appeal of a ruling of invalidity. To the contrary, while the issue of whether
royalties will ultimately be owed pursuant to a license agreement may be up in the air while a
case makes its way through the appellate process, that does not render the license agreement
itself a nullity. See Go Medical Indus. Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1273 (Fed. Cir.
2006) (district court ruling that patent was invalid “had no effect on the contractual relationship”
between patent holder and licensee; “the license did not automatically terminate with the district
court’s ruling . . . because the invalidity finding was still pending appeal” and thus royalties
would be owed if ruling was reversed). Mirowski’s suggestion that the execution of the 2004
Agreement somehow retroactively removed the licensee status enjoyed by Boston Scientific in
2002 and 2003 is similarly unavailing. The 2004 Agreement simply altered Boston Scientific’s
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because the License Agreement was not terminated prior to the expiration of the patent, each
ICD sale at issue was authorized by the License Agreement and could not have constituted
infringement of the ’288 patent.
On this point, Dow Chem. Co. v. United States, 226 F.3d 1334 (Fed. Cir. 2000), is
instructive. The facts set forth in that opinion indicate that the United States and Dow Chemical
Company (“Dow”) negotiated a license agreement in 1972 regarding a patent owned by Dow
that related to a method of filling abandoned mines to prevent the collapse of the overlying land.
In 1975, after the United States had completed various mine backfilling projects, Dow sought an
accounting of royalties due under the license. The United States took the position that no
royalties were due because it had not practiced the invention covered by Dow’s patent. The
dispute between the parties continued for several years, with the United States refusing to pay
royalties and Dow asking it to reconsider its position. Finally, in 1983, Dow sued the United
States, seeking a reasonable royalty for the infringement of its patent or, in the alternative,
seeking damages for the United States’ breach of the license agreement. Two years later, “Dow
notified the government that it was terminating the license, effective as of the date of the breach
of the contract or the date of the notice, whichever was legally earlier, because the government
had failed to pay royalties.” Id. at 1337.
The district court found that the patent was valid and was infringed by the United States.
It then held that the United States’ refusal to pay any royalties under the license agreement
rendered that agreement void ab initio; accordingly, it awarded damages on the basis of
unlicensed infringement, rather than breach of contract. On appeal, the Federal Circuit, noting

obligation to pay Mirowski for its activities during that time period; it did not transform those
activities from authorized to infringing. Neither did Boston Scientific’s alleged failure to own up
to its payment obligations; again, that failure (to the extent it occurred) constituted a breach of
the 2004 Agreement, but it did not retroactively strip Boston Scientific of its licensee status.
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that “[r]epudiation occurs when one party refuses to perform and communicates that refusal
distinctly and unqualifiedly to the other party,” found that the United States had repudiated (that
is, materially breached) the license in 1978 when it “clearly and unequivocally expressed its
intention to never pay royalties.” Id. at 1345. However, the court disagreed that the repudiation
by the United States rendered the license agreement void ab initio. Rather, when one party
repudiates a contract, “[t]he injured party can choose between terminating the contract or
continuing it.” Id. at 1344 (citing St. Paul Plow-Works v. Starling, 140 U.S. 184 (1891);
McDonnell Douglas Corp. v. United States, 182 F.3d 1319, 1327 (Fed. Cir. 1999); Cities Service
Helex, Inc. v. United States, 543 F.2d 1306, 1313 (Ct. Cl. 1976)). Dow chose to continue the
contract until, during the pendency of the lawsuit, it decided to terminate the license. Prior to the
date of termination, the United States was liable for breach of contract for failing to pay royalties
due under the license agreement; after the date of termination, any use of Dow’s invention
constituted infringement by the United States. Id. at 1348.
As Dow demonstrates, Mirowski’s suggestion that Boston Scientific’s alleged material
breach of the contract in April 2002—when it stopped making royalty payments because the
’288 patent had been found invalid in the Indiana Litigation—transformed Boston Scientific
from a licensee to an infringer is incorrect. Only Mirowski’s termination of the License
Agreement could do that, and there was no such termination at any time prior to the expiration of
the ’288 patent.
In light of this fact, had Mirowski chosen to assert a claim for infringement against
Boston Scientific that claim would have been frivolous and therefore would not have supplied a
basis for federal question jurisdiction. See Carr v. Tillery, 591 F.3d 909, 917 (7th Cir. 2010) (“A
suit that is utterly frivolous does not engage the jurisdiction of the federal courts.”); see also

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Steel Co. v. Citizens for a Better Eviron., 523 U.S. 83, 89 (1998) (“Dismissal for lack of subjectmatter jurisdiction because of the inadequacy of the federal claim is proper only when the claim
is so insubstantial, implausible, foreclosed by prior decisions of this Court, or otherwise
completely devoid of merit as not to involve a federal controversy.”) (citations omitted).
Mirowski is correct that “the defense of a license . . . does not abrogate the existence of federal
question jurisdiction as established in the plaintiff’s complaint.” Mirowski’s Brief, Dkt. No. 410,
at 10 (citing Pixton v. B&B Plastics, Inc., 291 F.3d 1324, 1327 (Fed Cir. 2002) (“[T]his is an
action for patent infringement in which the defendant has asserted the defense of a license.
Jurisdiction in the federal courts is not lost simply because the most efficient approach at trial
may be to address the license defense first.”)). However, that uncontroversial statement of law
begs the critical question, which is whether the plaintiff’s complaint stated a colorable federal
claim to begin with. In Pixton, for example, the plaintiff alleged that it had terminated the
license agreement; if that factual allegation were proven, Pixton would have had a viable
infringement claim. Here, on the other hand, the fact is that the License Agreement was not
terminated; therefore, even if Mirowski had asserted an infringement claim against Boston
Scientific, that claim would not have invoked federal jurisdiction because it would have been
“wholly imaginary.” See Arvin Indus., 510 F.2d at 1073 (“Plaintiff does not have ‘pleader’s
choice’ . . . to sue for violation of its federal patent rights which its own complaint shows did not
occur” because the sales in question were authorized by a license agreement that had not been
terminated.).
For the reasons set forth above, the Court determines that Mirowski could not have
asserted a colorable claim for infringement of the ’288 patent against Boston Scientific.
Accordingly, this case is not one in which federal law creates the cause of action asserted.

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B. Does This Case Fall into the “Special and Small Category of Cases” Recognized
by the Supreme Court?
As noted above, the Supreme Court has recognized that there are cases in which “arising
under” jurisdiction lies even though the case involves only claims based on state law. Gunn,
133 S.Ct. at 1064. The Supreme Court has set forth the following inquiry to be used to
determine whether a particular case falls into what it has described as a “special and small
category of cases”:
Does the “state-law claim necessarily raise a stated federal issue, actually disputed
and substantial, which a federal forum may entertain without disturbing any
congressionally approved balance of federal and state judicial responsibilities”?
That is, federal jurisdiction over a state law claim will lie if a federal issue is: (1)
necessarily raised, (2) actually disputed, (3) substantial, and (4) capable of
resolution in federal court without disrupting the federal-state balance approved
by Congress. Where all four of these requirements are met, we held, jurisdiction is
proper because there is a “serious federal interest in claiming the advantages
thought to be inherent in a federal forum,” which can be vindicated without
disrupting Congress’s intended division of labor between state and federal courts.
Gunn, 133 S.Ct. at 1065 (quoting Grable & Sons Metal Products, Inc. v. Darue Engineering &
Mfg., 545 U.S. 308, 313-14 (2005)).
This case clearly satisfies the first and second Gunn requirements. A patent issue—
which of the ICDs sold by Boston Scientific were “covered by” claim 4 of the ’288 patent—has
been necessarily raised and actually disputed from the initiation of this suit. However, this case
fails to satisfy the third prong; it does not involve a federal issue that is “substantial” as that term
must be read in light of Gunn.
There is no doubt, as Mirowski argues, that “[t]he scope of patent claims is one of the
most important and central issues in patent litigation.” Mirowski Brief at 13 (Dkt. No. 410).
There is also no doubt that U.S. Valves, Inc. v. Dray, 190 F.3d 811 (7th Cir. 1999), upon which
Mirowski primarily relies, and other pre-Gunn cases support a finding of federal jurisdiction in

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this case. The court in Dray applied the following standard for determining whether federal
jurisdiction existed in a case involving a patent license dispute:
Patent law jurisdiction “extends only to those cases in which a well-pleaded
complaint establishes either that federal patent law creates the cause of action or
that the plaintiff’s right to relief necessarily depends on resolution of a substantial
question of federal patent law, in that patent law is a necessary element of one of
the well-pleaded claims.”
Id. at 813 (emphasis added) (quoting Christianson v. Colt Indus. Operating Corp., 486
U.S. 800, 809 (1988)). Therefore, the court held:
Whether Dray breached the exclusivity provision of the license agreement
depends on whether he sold valves which infringed on the licensed patents. The
only way to tell whether a valve is covered by the licensed patents is to apply
substantive patent law. Moreover, the only means by which to fix damages is to
evaluate each valve sold, and determine whether that valve is an infringing valve.
. . . [W]hether a breach occurred depends on whether Dray infringed the licensed
patents, and this issue requires the application of the federal patent laws. Thus,
patent law is a necessary element of U.S. Valves’ counterclaim, and the appeal
should be transferred to the Federal Circuit.
Id. at 814 (citations and internal quotation marks omitted). As Gunn makes abundantly clear,
however, the fact that an issue of patent law will have to be resolved in order to resolve a case is
necessary to confer federal jurisdiction over the case—it is the second Gunn requirement—but it
is not sufficient to confer federal jurisdiction, because it is not sufficient to satisfy the third Gunn
requirement, which “looks instead to the importance of the [patent] issue to the federal system as
a whole.” Gunn, 133 S.Ct. at 1066.
Gunn was a legal malpractice case arising out of litigation in which a patent owned by
Minton was declared invalid. Minton sued his lawyers, arguing that their failure to make a
particular argument constituted malpractice. The resolution of the malpractice claim hinged on
an issue of patent law—whether the omitted argument would have been successful and therefore
would have avoided the invalidity ruling. The Supreme Court held that the resolution of the

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patent issues by the state court in that case did not carry the requisite importance to the federal
system as a whole:
Because of the backward-looking nature of a legal malpractice claim, the question
is posed in a merely hypothetical sense: If Minton’s lawyers had raised a timely
experimental-use argument, would the result in the patent infringement
proceeding have been different? No matter how the state courts resolve that
hypothetical “case within a case,” it will not change the real-world result of the
prior federal patent litigation. Minton’s patent will remain invalid.
Id. at 1067.
This case, too, can only be characterized as “backward-looking.” The ’288 patent
expired long before this case was filed. The patent issue in this case with regard to the ’288
patent is to what extent Mirowski hypothetically could have enjoined Boston Scientific from
selling ICDs if it had not entered into the License Agreement (or if it had terminated the License
Agreement at some point prior to the expiration of the patent). Because there can be no covered
sales going forward—in light of the expiration of the patent—any ruling in this case cannot have
any effect on any future events; it can only resolve Boston Scientific’s obligations for events that
occurred in the past.
That these circumstances dictate a finding of no federal jurisdiction under the test as
clarified in Gunn is made clear by the Federal Circuit’s application of Gunn in Forrester
Environmental Servs. v. Wheelabrator Techs., Inc., 715 F.3d 1329 (Fed. Cir. 2013). In that case,
the plaintiff alleged that the defendant had falsely told a Taiwanese company (“Kobin”) that the
plaintiff’s product that Kobin was using in Taiwan was covered by a patent owned by the
defendant, causing Kobin to terminate its business with the plaintiff. The resolution of that claim
“necessarily require[d] the trial court to construe the claims of the [defendant’s] patent in order
to determine whether the alleged statements were, indeed, false.” Id. at 1334. The court
recognized that “[i]n the past, we have concluded that similar state law claims premised on
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allegedly false statements about patents raised a substantial question of federal patent law.” Id.
In Forrester, however, there was no prospect of inconsistent judgments between state and federal
courts with regard to the construction of the patent claims because “[t]he use of a patented
process outside the United States is not an act of patent infringement” and all of Kobin’s alleged
activities occurred in Taiwan.
Therefore, there [was] no prospect of a future U.S. infringement suit arising out of
Kobin’s use of [either the plaintiff’s product or the defendant’s product] in
Taiwan and accordingly no prospect of inconsistent judgments between state and
federal courts. Moreover, the [relevant] patents have all now expired, so there is
also no prospect that future conduct in the U.S. could lead to an infringement suit
regarding those patents. Here, as in Gunn, the potential conflict is purely
“hypothetical.”
Id. Accordingly, the patent issues in the case were not “substantial in the relevant sense” under
Gunn, and federal jurisdiction was absent.
The same is true in this case. This case is backward-looking, and the parties point to no
patent issue necessarily raised by this case that could have any effect beyond the parties to this
case. The Court also is unaware of any such issue. In its absence, this Court cannot exercise
jurisdiction over this case.
III. CONCLUSION
For the reasons set forth above, this case must be, and hereby is, DISMISSED for lack of
subject matter jurisdiction.
SO ORDERED: 07/29/2013
_______________________________
Hon. William T. Lawrence, Judge
United States District Court
Southern District of Indiana

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