United States Supreme Court Reverses Federal Circuit Decision in Medtronic, Inc. v. Mirowski Family Ventures, LLC

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(January 22, 2014) A unanimous Supreme Court reversed the Federal Circuit and held that, when a licensee seeks a declaratory judgment against a patentee to establish that there is no infringement, the burden of proving infringement remains with the patentee.

According to the opinion, Mirowski Family Ventures, LLC (“Mirowski”) owns patents (U.S. Reissue Patents Nos. RE38,119 and RE39,897) relating to implantable heart stimulators.  Figure 1 of U.S. Reissue Patent No. RE38,119 is illustrated below:

Figure 1 of U.S. Reissue Patent No. RE38,119

By way of background, Mirowski entered into a licensing agreement that permitted Medtronic, Inc. (“Medtronic”) to practice certain Mirowski patents in exchange for royalty payments.  Mirowski notified Medtronic of its belief that several of Medtronic’s new products infringed the licensed patents, and thus royalty payments relating to those product were owed.  Medtronic then brought a declaratory judgment action asserting that their products did not noninfringe the Mirowski patents.  The district court concluded that Mirowski, as the party asserting infringement, had the burden of proving infringement and that Mirowski had not met that burden.  The Federal Circuit disagreed.  It acknowledged that a patentee normally bears the burden of proof, but concluded that where the patentee is a declaratory judgment defendant and, like Mirowski, is foreclosed from asserting an infringement counterclaim by the continued existence of a licensing agreement, the party seeking the declaratory judgment, namely Medtronic, bears the burden of persuasion.

The Supreme Court reversed the decision of the Federal Circuit and held that, “when a licensee seeks a declaratory judgment against a patentee to establish that there is no infringement, the burden of proving infringement remains with the patentee.”  The case was remanded for further proceedings.

Christie Matthaei
Christie Matthaei is an associate in our Seattle office. Ms. Matthaei represents various clients in all aspects of intellectual property disputes, with a focus on patent litigation. Ms. Matthaei also counsels clients on pre-litigation matters, including analyzing patent infringement and validity. Ms. Matthaei earned her J.D. from the George Washington University Law School, where she was a member of the American Intellectual Property Law Association Journal. During her time in law school, Ms. Matthaei interned for the White House, working in the Office of Science and Technology Policy. Prior to law school, Ms. Matthaei worked at Pacific Northwest National Laboratory as a chemical engineer on projects related to alternative energy and green chemicals. Ms. Matthaei obtained a B.S. in Chemical Engineering from the University of Washington. Ms. Matthaei was a summer associate in 2010 and joined the firm as an associate in 2011.
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