Supreme Court reverses Federal Circuit in Medtronic patent case

Supreme Court reverses Federal Circuit in Medtronic patent case

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[JURIST] The US Supreme Court [official website] ruled [opinion, PDF] Wednesday in the case of Medtronic v. Mirowski Family Ventures [SCOTUSblog backgrounder] reversing the US Court of Appeals for the Federal Circuit [official website]. While the Supreme Court held that the Federal Circuit had subject matter jurisdiction to hear the case, it found that the Federal Circuit improperly placed the burden of persuasion on Medtronic as the party seeking declaratory judgment. Writing for a unanimous court, Justice Stephen Breyer stated:

[I]n a licensee’s declaratory judgment action, the burden of proving infringement should remain with the patentee. … To shift the burden depending upon the form of the action could create postlitigation uncertainty about the scope of the patent. … If the burden shifts … both sides might lose as to infringement, leaving the infringement question undecided, creating uncertainty among the parties and others who seek to know just what products and processes they are free to use.

The decision reversed the ruling [opinion] by the Federal Circuit and remanded for further proceedings.

The case arose when Medtronic brought declaratory judgment action in Federal District Court in Delaware against Mirowski for infringing on its patents. The Supreme Court heard oral argument on the case in November after granting certiorari [JURIST reports] in May.