Docket No. 12-1128
U.S. Supreme Court (Breyer)
January 22, 2014
Brief Summary: Where a patentee alleges infringement by a licensee and the licensee moves for DJ of non-infringement, the burden of proof remains with the patentee to show infringement (e.g., the burden does not shift to the licensee to show no infringement).
Summary: Medtronic (Petitioner) licensed patents relating to implantable heart stimulators from Respondent Mirowski Family Ventures, LLC (“Mirowski”). The license includes provisions for identifying products covered by the license and resolve disputes, under which Mirowski notified Medtronic of its belief that several Medtronic products infringe the patents. Medtronic challenged that assertion in a DJ action. The DC found that Mirowski had the burden of proof as it was asserting infringement. The FC disagreed, finding that “where the patentee is a [DJ] defendant and, like Mirowski, is foreclosed from asserting an infringement counterclaim by the continued existence of a licensing agreement”, the party seeking DJ (Medtronic) “bears the burden of persuasion.” First, the Supreme Court found that the FC had jurisdiction over the case because Mirowski could have terminated the license agreement and sued for infringement under Federal Law if Medtronic refused to pay royalties (e.g., the dispute “arises under” federal patent law). The Supreme Court also disagreed with the FC, holding that Mirowski bears the burden of showing infringement because “[s]hifting the burden based on the form of the action could create postlitigation uncertainty about a patent’s scope”, could “create unnecessary complexity by compelling a licensee to prove a negative”, and “burden shifting is difficult to reconcile with the Declaratory Judgment Act’s purpose of ameliorating the ‘dilemma’ posed by ‘putting’ one challenging a patent’s scope ‘to the choice between abandoning his rights or risking’ suit” (citing Medimmune, US 2007 and stating: “Mirowski set this dispute in motion by accusing Medtronic of infringement, and there is no convincing reason why burden of proof law should favor the patentee.”)