Tech Transfer Central
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The Supreme Court’s Medtronic Ruling: Practical Guidance for Protecting University IP

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: April 24, 2014

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Supreme CourtWhen a licensee seeks declaratory judgment, YOU have the burden of proof…

On January 22, 2014 the U.S. Supreme Court issued its decision in Medtronic, Inc. v. Mirowski Family Ventures, LLC, answering the question of who bears the burden of proof when a patent licensee seeks a declaratory judgment of non-infringement. The Court unanimously held that this burden stands with the patent holder, reversing the decision by the U.S. Court of Appeals for the Federal Circuit.

Given the typical TTO’s large number of licensees and the not uncommon task of dealing with declaratory judgment petitions, this case has the potential to significantly affect university-based IP as well as licensee relations, and it could embolden more licensees to challenge your patents. That’s why Technology Transfer Tactics’ Distance Learning Division has teamed with Charley Macedo, partner with the New York intellectual property law firm Amster, Rothstein and Ebenstein, LLP and Brian D. Gildea, Esq., Executive Director of IP & Licensing at Boston University Technology Development. Our team will dissect this complex case while giving you practical guidance on how to manage and fortify your patent portfolio in light of the decision.

Here is a look at the program agenda:

  • Review of the Medtronic v Mirowski Family Ventures case specifics
  • Understand the three notions the Supreme Court’s decision was based upon
  • Expert tips on drafting and negotiating future patent licenses in light of Medtronic
  • How to respond to declaratory judgment petitions – and what will meet “burden of proof”
  • Practical guidance for prepare burden of proof evidence
  • Best practices for dealing with licensees who file for declaratory judgment
  • And more…

Your Team of Presenters:

Brian D Gildea

Brian D. Gildea, Esq.
Executive Director, IP & Licensing
Boston University Technology Development
Mr. Gildea is responsible for the Intellectual Property and Licensing group.  He has more than 15 years of experience as an intellectual property attorney focusing on patent, trademark and trade secret matters in the areas of chemistry, biotechnology, life science, pharmaceuticals, pathogen detection, mass spectrometry and diagnostic assays.  

Charles R. MacedoCharles R. Macedo
Partner
Amster, Rothstein and Ebenstein, LLP
Mr. Macedo advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. He also assists clients in obtaining, maintaining and enforcing patent and trademark portfolios. Mr. Macedo is the author of The Corporate Insider’s Guide to U.S. Patent Practice, being published by Oxford University Press, and received the prestigious AIPLA Robert C. Watson Award for his analysis of the First to File System vs. First to Invent System.

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