US Supreme Court unanimously overturns Federal Circuit decision in Medtronic

The ruling overturns a September 2012 decision by the Federal Circuit, which found that in cases where a licensee seeks a declaratory judgment against a patent holder, the licensee bears the burden of proof. The Federal Circuit reasoned that since Medtronic was asking a court to declare the products in question did not infringe, it should bear the burden of proving it was entitled to such relief.

But after hearing arguments in November last year, the Supreme Court unanimously ruled today that even in such cases, the patentee bears the burden of proof.

In its opinion, the Supreme Court quoted a decision in Precision Instrument Manufacturing v Automotive Maintenance Machin­ery: “The public interest, of course, favours the maintenance of a well-functioning patent system. But the ‘public’ also has a ‘paramount interest in seeing that patent monopo­lies . . . are kept within their legitimate scope.'”

Justice Stephen Breyer, writing on behalf of all the justices, concluded: “The general public interest considerations are, at most, in balance. They do not favour a change in the ordinary rule imposing the burden of proving infringement upon the patentee.”

The dispute stems from 2007 claim that a device manufactured by Medtronic, known as a cardiac resynchronisation therapy, infringed patents owned by Mirowski Family Ventures, which licensed them to Boston Scientific. The parties had agreed that Medtronic would sub-license the patents and pay royalties on any new products it made which used the technology they covered.

But the parties disagreed on whether Medtronic’s CRT products used technology covered by the patents. The District Court for the District of Delaware found that the patents were valid and enforceable but that Medtronic did not violate them.