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Infringement Burden of Proof on Declaratory Judgment

Posted Tuesday, January 28, 2014 by Brian Apel

On Wednesday, the Supreme Court clarified an important question for patent litigation, namely that the burden of proof for infringement remains with the patentee even if the patentee is the defendant in a declaratory judgment action brought by a licensee. Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. __ (2014). Justice Breyer authored the Court’s unanimous opinion.

Medtronic, a medical device manufacturer, licensed certain medical device patents from Mirowski. When Medtronic began manufacturing newer products, Mirowski notified Medtronic that they believed the newer products infringed their patents. Medtronic then sought a declaratory judgment of noninfringement. After a bench trial, the District Court ruled in favor of Medtronic because Mirowski, the defendant, failed to prove infringement. On appeal, the Federal Circuit held that Medtronic should have had the burden of proof at trial because (1) they were the plaintiff and because (2) the existence of the licensing agreement foreclosed Mirowski from asserting an infringement counterclaim.

The Supreme Court (after dispensing a jurisdictional challenge) reversed the Federal Circuit and held that even under these circumstances, the burden of proof for infringement remains with the patentee. Legally, the Court explained, not only is there extensive precedential case law that supports keeping the burden of proof with the patentee, but a declaratory judgment action is a procedural device that should not change substantive rights – rights that include which party bears the burden of proof. From a practical perspective, the Court reasoned that keeping the burden of proof with the patentee provides consistency, predictability, and finality to infringement judgments that reduce both the amount of complexity of subsequent litigation.

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