The Supreme Court Clarifies the Burden of Proof in Declaratory-Judgment Patent Actions
By ROBERT M. MASTERS, IGOR V. TIMOFEYEV & JOHN R. RHINE
The U.S. Supreme Court's recent decision in Medtronic, Inc. v. Mirowski Family Ventures, LLC (No. 12-1128), decisively settled the question of who bears the burden of proof in an action where a patent licensee seeks a declaratory-judgment of non-infringement. The Court held that this burden resides with the patent holder, reversing a contrary decision by the Federal Circuit. 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 the wake of the Supreme Court’s decision.