Burden of proof to establish infringement remains with the patentee even in declaratory judgment action brought by licensee

Abstract

The US Supreme Court unanimously reversed a previous determination by the US Court of Appeals for the Federal Circuit, holding that, even in a declaratory judgment action brought by a licensee, the burden of proving patent infringement remains with the patent holder. Legal context In 2007, the US Supreme Court overruled precedent from the US Court of Appeals for the Federal Circuit which had formerly prevented patent licensees in good standing from bringing a declaratory judgment action for lack of a justiciable case or controversy. In MedImmune, Inc v Genentech, Inc, 549 US 118 (2007), the Supreme Court found that a licensee had standing to bring a declaratory judgment action, despite the fact that it continued to make royalty payments for its licensed products, reasoning that a licensee should not be forced to breach its licensing agreement and risk actual and treble damages in an infringement suit in order to challenge the extent of coverage of the licence. In Medtronic, Inc v Mirowski Family Ventures, LLC, 134 S Ct 843 (2014), the court resolved the ensuing question of which party bears the burden of proving infringement in a declaratory judgment action brought by a licensee in good standing, when the licensor is precluded from making an infringement counterclaim by the continued existence of that licence.