U.S. Supreme Court Reverses Medtronic Ruling
William C. Baton, a partner in the Life Sciences and Intellectual Property and Technology practices, was quoted about how a recent U.S. Supreme Court decision overturning a limited Federal Circuit holding returned the burden of proof to show infringement back to the status quo.
Bill explained in this article that in its decision in favor of medical device company Medtronic – a licensee accused of using Mirowski’s patents without paying royalties allegedly required under their licensing agreement – the Supreme Court held that the suit was an exception to the “ordinary default rule” that generally requires declaratory judgment plaintiffs to prove their claims.
Such cases, Bill added, are not “an exception to the longstanding rule that a patentee bears the burden of proving infringement. In short, even though Medtronic was the declaratory judgment plaintiff, defendant Mirowski, the patentee, bore the burden of proving to the court that Medtronic, its licensee, infringed Mirowski’s patents.
“The Supreme Court suggested that, to do otherwise, would have subjected Medtronic to prove a negative – i.e. that it was not an infringer,” Bill said in the article.
Click here to read the story.
The story was also published in World Intellectual Property Review.