Medtronic, Inc. v. Mirowski Family Ventures, LLC (571 U.S. 191)
U.S. Supreme Court · decided January 22, 2014 · Supreme Court Database (Spaeth)
- Citation
- 571 U.S. 191 · 134 S. Ct. 843
- Decided
- January 22, 2014
- Term
- October Term 2013
- Vote
- 9–0
- Majority author
- Justice Breyer
- Issue area
- Economic Activity
- Disposition
- Reversed and remanded
- Outcome
- Petitioning party won
- Ideological direction
- Liberal
Opinion excerpt
2. When a licensee seeks a declaratory judgment against a patentee that its products do not infringe the licensed patent, the patentee bears the burden of persuasion on the issue of infringement. Pp. 849 - 852. (a) This conclusion is strongly supported by three settled legal propositions: First, a patentee ordinarily bears the burden of proving infringement, see, e.g., Agawam Co. v. Jordan, 7 Wall. 583, 609, 19 L.Ed. 177; second, the "operation of the Declaratory Judgment Act" is only "procedural," Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240, 57 S.Ct. 461, 81 L.Ed. 617, leaving "substantive rights unchanged," Beacon Theatres, Inc. v. Westover, 359 U.S. 500, 509, 79 S.Ct. 948, 3 L.Ed.2d 988; and third, "the burden of proof" is a " 'substantive' aspect of a claim," Raleigh v. Illinois Dept. of Revenue, 530 U.S. 15, 20-21, 120 S.Ct. 1951, 147 L.Ed.2d 13. Practical considerations lead to the same conclusion. Shifting the burden based on the form of the action could create postlitigation uncertainty about a patent's scope. It may also create unnecessary complexity by compelling a licensee to prove a negative. Finally, burden shifting is difficult to reconcile with the Declaratory Judgment Act's purpose of ameliorating the "dilemma" posed by "putting" one challenging a patent's scope "to the choice between abandoning his rights or risking" suit, MedImmune, Inc. v. Genentech,…
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