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Sup. Ct. Rules Burden of Proof Remains with Patent Owner

By Angie M. Hankins

The Supreme Court began 2014 by reversing the Court of Appeals for the Federal Circuit's decision in Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843 (Jan. 22, 2014). The Supreme Court held that the burden of proof on infringement remains with the patent owner even when a licensee files a declaratory judgment suit seeking a judgment of no infringement. Id. at 846. The Supreme Court reached this conclusion based on three legal propositions:

  • The burden of proving infringement generally rests with the patent owner;
  • The operation of the Declaratory Judgment Act is only procedural; and
  • The burden of proof is substantive.

On the practical side, the Supreme Court found that:

  • Shifting the burden depending on the form of the proceeding would result in uncertainty as to the scope of the patent;
  • The patent owner is in a better position to identify infringement; and
  • Shifting the burden would make bringing a declaratory judgment proceeding “disadvantageous” as compared with just refusing to pay royalties.

Thus, the Supreme Court concluded that the burden of proof on infringement remains with the patent owner in a declaratory judgment proceeding for non-infringement.

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