The Burden is on You: A Defendant Patent Holder Still Bears the Burden of Proving Infringement in a Declaratory Judgment Action Brought by a Licensee

by Moore & Van Allen PLLC

For nearly 150 years, it has been established that a patent holder (“patentee”) ordinarily bears the burden of proving infringement.  The U.S. Supreme Court’s recent decision in Medtronic v. Mirowski Family Ventures, LLC, 571 U.S. ____ (Jan. 22, 2014) reversed the Federal Circuit Court of Appeals’ attempt to shift the burden of proof to a licensee seeking a declaratory judgment that its products do not infringe the patentee’s patents.  The unanimous Supreme Court found little support for upsetting the balance of our “well-functioning patent system” or undermining the purposes of the Declaratory Judgment Act by changing the default rules.   The Supreme Court cited to precedent dating back to 1869, including Agawam Co. v. Jordan, 7 Wall. 583, 609 (1869), which established that the patentee usually bears the burden of proof in an infringement action.  That burden does not normally shift even when a patentee is a counterclaiming defendant in a declaratory judgment action.  In this declaratory judgment action, however, the Federal Circuit reasoned that the burden of persuasion should shift to the plaintiff licensee because the defendant patentee was foreclosed from filing an infringement counterclaim due to the ongoing license agreement.  The Supreme Court made it clear that a patentee cannot accuse a licensee of infringement and shift the burden of proving a negative (that the licensee is not infringing the patent) onto the licensee.  The High Court grounded its reasoning in established legal principles, as well as practical considerations, which are highlighted below.

The License Agreement & Declaratory Judgment Action   

Medtronic designs, produces, and sells medical devices.  Medtronic entered into an agreement with Mirowski under which Medtronic would pay royalties to Mirowksi for the right to practice some of Mirowski’s patents.  The agreement provided that if Mirowski notified Medtronic that a Medtronic product infringed a Mirowski patent, Medtronic could either (1) cure the nonpayment of royalties, or (2) pay the royalties into an escrow account and challenge the infringement assertion in a declaratory judgment action.  If Medtronic failed to pay the royalties, Mirowski could terminate the license and bring an infringement action.  After a notice from Mirowski alleging infringement, pursuant to the license agreement, Medtronic paid royalties into an escrow account and filed this declaratory judgment action seeking to establish that its products are non-infringing and that it does not owe royalties to Mirowski.  The District Court held that the defendant Mirowski, “as the part[y] asserting infringement,” had the burden of proving infringement.  The Federal Circuit ruled to the contrary, because Mirowski was unable to file an infringement counterclaim due to the ongoing license with plaintiff Medtronic.

The Burden Will Not Shift 

Contrary to the Federal Circuit, the Supreme Court unanimously held that “the burden of per­suasion is with the patentee, just as it would be had the patentee brought an infringement suit,” based on “simple legal logic, resting upon settled case law” and “practical considerations.”  The three legal principles the Supreme Court relied upon, citing cases ranging from the 1800s and early 1900s to present day:

  • The burden of proving infringement generally rests on the patentee.
  • The Court has considered “the operation of the Declaratory Judgment Act” to be only “procedural,” and it leaves “sub­stantive rights unchanged.”
  • The burden of proof is a sub­stantive component of a claim.

The Court reasoned that “[t]aken together these three legal propositions indicate that, in a licensee’s declaratory judgment action, the burden of proving infringement should remain with the patentee.”  The Court also noted several practical considerations that support its position, including:

  • confusion and lack of finality that may be caused due to re-litigation of the infringement issue in an action where the burden shifts back to the patentee,
  • complications presented by a licensee having to prove non-infringement without knowing the patentee’s theories of infringement, and
  • shifting the burden makes a declaratory judgment action disadvantageous to the licensee and defeats the purpose of the Declaratory Judgment Act, which is to “ameliorate the dilemma posed by putting one who challenges a patent’s scope to the choice between aban­doning his rights or risking suit.”

The Supreme Court was unambiguous in its declaration that patentees will not find solace in forcing licensees into filing declaratory judgments actions to ward off assertions of infringement.  Despite the arguments raised by the Federal Circuit, the Supreme Court declared: “Indeed, it was Mirowski that set the present dispute in motion by accusing Medtronic of in­fringement. And in such an instance, we see no convinc­ing reason why burden of proof law should favor the patentee.”  The status quo will remain.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Moore & Van Allen PLLC | Attorney Advertising

Written by:

Moore & Van Allen PLLC

Moore & Van Allen PLLC on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.