The ‘‘Burden’’ of Patent Infringement: Supreme Court Holds That Burden of Proof Remains With Patentee Even in Declaratory Judgment Actions Filed by Licensee


The Supreme Court of the United States has made it clear that the traditional canons of litigation — including those involving jurisdiction and which party bears the burden of proof — hold true in patent cases, even those cases involving a license agreement and a declaratory judgment action by a licensee against a patentee. Following up on its 2007 decision in MedImmune v. Genentech, the Supreme Court recently ruled in Medtronic v. Mirowski Family Ventures that the burden of proof in a patent infringement case remains with the patentee, including in a declaratory judgment suit brought by a licensee.

This is the second time the Supreme Court has reversed the U.S. Court of Appeals of the Federal Circuit in cases involving declaratory judgment claims brought by licensees. In MedImmune, the Supreme Court held that a patent licensee is not required to repudiate a license agreement before seeking a declaratory judgment that the licensed patent is invalid, unenforceable or not infringed. The MedImmune decision removed a jurisdictional barrier erected by the Federal Circuit to a patent challenge by a licensee, which otherwise would have been faced with the decision to terminate the license or breach the agreement before seeking declaratory relief.

Originally published in BNA’s Patent, Trademark & Copyright Journal, 87 PTCJ 1570, 4/25/14.

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