Federal Circuit Review – Issue 6 – 01-29-2014

Each week in the Federal Circuit Review, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

– Joe Robinson and Bob Schaffer

 

 

Supreme Court Holds Patentee Always Bears Burden on Infringement, Even in Declaratory Judgment Action

Medtronic, Inc. v. Mirowski Family Ventures, LLC, No. 12-1128, 2014 U.S. LEXIS 788 (U.S. Jan. 22, 2014) (Breyer, J.) (unanimous opinion). Click here for a copy of the opinion.

The Supreme Court held that when a licensee seeks a declaratory judgment of noninfringement against a patentee, the patentee bears the burden of persuasion on the issue of infringement. Mirowski owned patents relating to an implantable heart stimulator, and in 1991 Medtronic (indirectly) licensed Mirowski’s technology. In 2007, Medtronic filed a declaratory judgment action in Delaware, contending its new products did not infringe the patents and that the patents were invalid. Although the district court recognized that Mirowski was the defendant, it nevertheless placed the burden of proving infringement upon Mirowski. The Federal Circuit disagreed and held that plaintiff Medtronic—even in a declaratory judgment action—bore the burden when the patentee is the defendant and that patentee, like Mirowski, is “foreclosed” from asserting an infringement counterclaim by the license. Slip op. at 3 (citing 695 F. 3d 1266, 1272 (Fed. Cir. 2012)).

The Supreme Court reversed the Federal Circuit’s decision and concluded that the burden of persuasion on the issue of infringement lies “with the patentee, just as it would be had the patentee brought an infringement suit.” Id. at 6. The Court cited three legal propositions to support its conclusion. First, “it is well established that the burden of proving infringement generally rests upon the patentee” that wants to enforce the patent. Id. Second, “the operation of the Declaratory Judgment Act [is] only procedural, leaving substantive rights unchanged.” Id. at 7 (citation omitted). And, related to the second proposition, “the burden of proof is a substantive aspect of a claim.” Id. (emphasis added). So, taken together, the burden of proving infringement remains with the patentee. Consequently, the Court reversed the Federal Circuit’s judgment and remanded for further proceedings.

 

The following opinions are not reported in this newsletter: 

Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., No. 2013-1117, 2014 U.S. App. LEXIS 1152 (Fed. Cir. Jan. 22, 2014) (Prost, J.) (affirming grant of defendant’s motion for partial summary judgment that patentee could not claim priority it sought because two intermediate applications in the chain of priority failed to specifically reference all earlier filed applications in the chain). Click here for a copy of the opinion.