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12-1128 MEDTRONIC INC. V. BOSTON SCIENTIFIC CORP. DECISION BELOW: 695 F.3d 1266 CERT. GRANTED 5/20/2013 QUESTION PRESENTED: In Medlmmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007), this 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 is whether, in such a declaratory judgment action brought by a licensee under Medlmmune, the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement. LOWER COURT CASE NUMBER: 2011-1313, 2011-1372
The U.S. Supreme Court case Medtronic, Inc. v. Mirowski Family Ventures, LLC in 2013 revolved around a patent dispute between the two parties involved. The Mirowski Family Ventures held patents for certain medical devices and had granted Medtronic Inc., a license to produce these devices under an agreement that required them to pay royalties on any products that incorporated the patented technology. However, when disagreements arose over whether some of Medtronic's new products fell within this category, they sought declaratory judgment from the courts to clarify their obligations without breaching their contract or infringing upon any patents. The key issue was who bore the burden of proof - should it be on Mirowski as patent holder (as is usually standard) or should it shift onto Medtronic due to its status as licensee? The court ruled unanimously in favor of Medtronic stating that even though they were licensees seeking clarification rather than defendants accused of infringement, it did not alter the basic rule: It remained with Mirowski as patentee to prove infringement.
In the case of Medtronic, Inc. v. Mirowski Family Ventures, LLC (2013), there was no dissenting opinion issued by any justice of the Supreme Court. The court unanimously ruled in favor of Medtronic, holding that when a licensee seeks a declaratory judgment against a patentee to establish that its products do not infringe the licensed patent, the burden of persuasion is on the patentee to prove infringement.