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The Supreme Court Appears Likely to Place the Burden of Proof in Declaratory-Judgment Actions on the Patentees

November 07, 2013

By ROBERT M. MASTERS & IGOR V. TIMOFEYEV

Earlier this week, the U.S. Supreme Court heard argument in Medtronic, Inc. v. Boston Scientific Corporation (No. 12-1128) — a case that will determine whether the patent-holder or the patent licensee bears the burden of proof in an action seeking a declaratory judgment of non-infringement. The oral argument strongly suggest that the Court will place that burden on the patentee, reversing a contrary decision by the U.S. Court of Appeals for the Federal Circuit. The Court's expected ruling could have significant implications for intellectual property rights holders. Companies that grant licenses to their intellectual property portfolio, particularly as a resolution to patent disputes, should consider potential modifications to their licensing arrangements in order to mitigate the impact of the Supreme Court’s likely decision.