Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

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

By Angie M. Hankins
April 02, 2014

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.

The Underlying Facts

In 1991, Mirowski Family Ventures, LLC (MFV) entered into a patent license agreement with Eli Lilly & Co., which then sublicensed the subject patents to Medtronic, Inc. (Medtronic). Under the agreement, if MFV notified Medtronic that a new Medtronic product infringed, Medtronic could: 1) cure the non-payment of royalties; or 2) cure the non-payment of royalties and challenge the assertion of infringement by bringing a declaratory judgment action. Medtronic also could choose not to challenge the asserted infringement but, contrary to the terms of the agreement, not pay royalties. In that case, MFV could terminate the license and bring an infringement action.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Removing Restrictive Covenants In New York Image

In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?

Fresh Filings Image

Notable recent court filings in entertainment law.