Burden of Proof

Yesterday, the United States Supreme Court held that the patentee has the burden of proving infringement when a licensee seeks declaratory judgment, in Medtronic v. Mirowski (PDF), reversing the lower court.

The appellant, Medtronics had a license from the respondent Mirowski to several medical device patents that required royalty payments on products that fell within the patents. Mirowski alleged that additional products fell within the scope of the licensed patents.

Medtronics brought a declaratory judgment proceeding challenging the allegations of infringement. At the Federal Circuit, the Court held that because Medtronics brought the proceeding and the defendant were unable to bring an infringement counterclaim under of the license, Medtronics had the burden to show non-infringement.

The unanimous Supreme Court reversed, and held that the patentee had the burden to show infringement because:

  1. that was the normal burden in patent proceedings;
  2. to do otherwise would create uncertainty as to the scope of the patent if in some instances there was a burden to show infringement and in other cases the burden was to show non-infringement; and
  3. the declaratory judgment procedure is intended to resolve ‘the dilemma’ as between the parties.

Many commentators have more details on the case and its implications such as Patently-O, Gray on Claims and Comparative Patent Remedies.