22 January 2014

Law in Plain English: Medtronic, Inc. v. Merowski Family Ventures, LLC

This is one in a series of posts designed to describe court decisions in plain English. For more detail and background on the legal issues, see the link to the case below. For similar posts, click here.

SCOTUSblogMedtronic, Inc. v. Merowski Family Ventures, LLC

Argument: Nov 5 2013 (Aud.)

BackgroundMedtronic, a leading manufacturer of medical devices and equipment, sued for declaratory judgment of noninfringement and invalidity of several patents owned by Mirowski Family Ventures. The District Court entered judgment of noninfringement in favor of Medtronic and judgment of validity and enforceability in favor of MFV. The Federal Circuit vacated and remanded the decision, finding that the court relied on a legally incorrect allocation of the burden of proof to find noninfringement in the limited circumstances of this case and incorrectly construed the claim terms in question.

Issue: The question before the Court is whether, in a declaratory judgment action brought by a licensee under MedImmune, Inc. v. Genentech, Inc., the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement.

Holding: In a unanimous decision, the Supreme Court ruled that when a licensee seeks a declaratory judgment against a patentee that its products do not infringe the licensed patent, the patentee bears the burden of persuasion on the issue of infringement. As a result, the Federal Circuit was reversed. The impact of this decision is that the burden of proof does not shift, even when the patentee is a defendant in a declaratory judgment action, and the plaintiff (the potential infringer) seeks a judgment that he does not infringe the patent.
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