In a January 22, 2014 decision, the U.S. Supreme Court overturned the Federal Circuit and held that when a licensee seeks a declaratory judgment against a patentee that the licensee’s products do not infringe the licensed patent, the patentee bears the burden of persuasion on the issue of infringement. Although it is well established that the burden of proving infringement generally lies with the patentee, the Federal Circuit had previously ruled that, in a patent license declaratory judgment action, a plaintiff licensee bears the burden of proving non-infringement. In Medtronic, Inc. v. Mirowski Family Ventures, LLC, the Supreme Court ruled that shifting the burden to the licensee in a declaratory judgment action is not supported by case law and also creates unnecessary complexity by, among other things, requiring a licensee to prove a negative.
For additional information, please see our linked Supreme Court Case Summary.