In Medtronic Inc. v. Boston Scientific Corp., Guidant Corp, and Mirowski Family Ventures, LLC (MFV), 2011-1313, -1372 (Fed. Cir. Sept. 18, 2012), Medtronic, a licensee to MFV's patents, brought a declaratory judgment action that MFV's patents were not infringed and not valid. At the district court, Medtronic and MFV disputed who had the burden of proving infringement. Ultimately, the district court entered judgment that the patents were not infringed, finding that MFV had not met its burden to prove infringement.
The Federal Circuit vacated this determination and held that "in the limited circumstance when an infringement counterclaim by a patentee is foreclosed by the continued existence of a license, a licensee seeking a declaratory judgment of noninfringement and of no consequent liability under the license bears the burden of persuasion" because "a contrary result would allow licensees to use MedImmune's shield as a sword — haling licensors into court and forcing them to assert and prove what had already been resolved by license." See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (allowing licensees to bring declaratory judgment actions to challenge a licensed patent's infringement and validity).
What This Means for You
While licensees who are not in breach of contract may still challenge infringement in court, the Federal Circuit has shifted the burden on this issue to the licensee. Now the licensee bears the burden of persuasion with respect to proving noninfringement. This holding is limited to the circumstance when the patentee is foreclosed from bringing infringement counterclaims.
Originally published in V&E IP Insights E-communication, September 20, 2012
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