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Douglas Panzer
January 24, 2014

Threaten to Sue Your Licensee and You Better Be Able to Prove Infringement

Posted By Douglas Panzer @ 11:19 am
Filed under: Declaratory Judgment,Litigation,Patent Litigation,Patents

The Supreme Court of the United States ruled on Tuesday, January 22 that a patent owner defending against declaratory judgment of non-infringement continues to bear the burden of proving infringement, even when the declaratory judgment plaintiff is a licensee.

In Medtronic, Inc. v. Mirowski Family Ventures, LLC (12-1128) the Supreme Court unanimously reversed the ruling of the Federal Circuit (that NEVER happens in patent cases, right?) that Mirowski, as the patent owner, held the burden of showing that licensee Medtronic infringed certain licensed patents, despite the case arising out of Medtronic’s declaratory judgment action. The court reasoned that:

  1.   A patentee normally bears the burden of proving infringement of the patent;
  2.   The stated operation of the Declaratory Judgment Act is to leave the rights of the parties unchanged, but simply to dictate procedure;
  3.   “Burden of proof” is a substantive part of a claim, the kind which is to remain unchanged under #2.

The court also voiced concern that shifting the burden to a declaratory judgment defendant may create confusion in two regards.   First, shifting the burden to a declaratory judgment defendant would force the defendant to “prove a negative” and “work in the dark” to attempt to negate every possible theory of infringement.   Second, post-litigation confusion may remain if the declaratory judgment plaintiff loses his case simply for failure of proof, where the same actions by another party (or the same licensee in the future) may not constitute infringement in light of a more sufficient showing of evidence.

Opinion of the court: [here]

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