The U.S. Supreme Court has agreed to consider yet another patent case. The case involves the burden of proof required when a license holder is accused of patent infringement.
In Medlmmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007), the Supreme Court ruled that a patent licensee that believes that its products do not infringe the patent and accordingly are not subject to royalty payments is “not required … to break or terminate its … license agreement before seeking a declaratory judgment in federal court that the underlying patent is … not infringed.”
The question presented in the current Supreme Court case, Medtronic, Inc. v. Boston Scientific Corp., is whether the licensee has the burden to prove that its products do not infringe the patent when filing a declaratory action. Medtronic licenses defibrillator patents controlled by Boston Scientific and challenged that its new products did not infringe those patents.
Generally, the patentee must prove infringement. However, the Federal Circuit ruled that the burden shifts to the plaintiff in cases where a licensee-in-good-standing files a lawsuit for declaratory judgment of non-infringement.
The Supreme Court will now determine the appropriate burden of proof. The case, however, will not be considered until next term.
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