The US Supreme Court has ruled that patent owners have the burden of proof when a patent licensee sues seeking a ruling that the patent is invalid and has not been infringed.
In the case of Medtronic Inc. v. Boston Scientific Corp. et al., Medtronic had licensed defibrillator patents from Boston Scientific Corp. Boston Scientific had previously licensed the same patents from Mirowski Family Ventures LLC.
Medtronic sought a declaratory judgment that its new products were not covered by some of the Mirowski patents. The terms of the license prohibited Mirowski from filing patent infringement counterclaims against Medtronic.
A lower court found that Mirowski had the burden of proving that Medtronic’s new products were covered by the Mirowski patents and also found that Mirowski had failed to meet that burden.
The Federal Circuit (which specializes in patent cases) vacated that ruling and held Medtronic had the burden of showing that it did not infringe.
The Supreme Court disagreed with the Federal Circuit, holding that the burden of proof of infringement still falls on the patent holder, even if the patent holder can’t bring an infringement claim against the licensee.
According to the opinion by Justice Stephen Breyer,
In our view, the burden of persuasion is with the patentee, just as it would be had the patentee brought an infringement suit. Simple legal logic, resting upon settled case law, strongly supports our conclusion.
Justice Breyer noted that, since patents can be complicated, the patent owner is in a better position than the alleged infringer to specify why and how a product infringes:
Until he does so, however, the alleged infringer may have to work in the dark, seeking, in his declaratory judgment complaint, to negate every conceivable infringement theory.
The case will now go back to the federal district court for further proceedings, including a determination on the infringement issue.