Medtronic, Inc. v. Mirowski Family Ventures, LLC.

Background

A medical device company (Medtronic) and a patent owner (Mirowski Family Ventures) had a license allowing Medtronic to pay royalties to use certain heart‑stimulating device patents. The license let Medtronic pay royalties into escrow and, if accused of infringement, bring a lawsuit asking a judge to declare its products noninfringing. In 2007 Mirowski said seven new Medtronic products infringed. Medtronic sued for a declaration of noninfringement and paid disputed royalties into escrow. The District Court found that the patent owner had not proved infringement and ruled for Medtronic; the Federal Circuit later said Medtronic, as the declaratory‑judgment plaintiff, should have borne the burden of proof.

Reasoning

The Court asked who must persuade the judge about infringement when a licensee sues for a declaration that it does not infringe. The Court held the patent owner must prove infringement, just as it would in an ordinary infringement lawsuit. The opinion rests on three points in the record: long‑standing law placing the burden on patentees, the idea that the Declaratory Judgment Act is procedural and does not change substantive burdens, and practical concerns that shifting the burden would create uncertainty about patent scope. The Court rejected the Federal Circuit’s rule that would shift the burden when a license prevents a counterclaim, relying on prior decisions cited in the opinion.

Real world impact

The decision keeps the burden of proving infringement on patent owners in licensee declaratory suits, makes it easier for licensees to challenge asserted patent claims without proving noninfringement, and reverses the Federal Circuit’s rule, sending the case back for further proceedings consistent with this holding.