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IP: Licensor or licensee, who bears the burden of proving infringement?

The Supreme Court seeks to clarify the apparent discrepancy between one of its rulings and the Federal Circuit’s decision in Medtronic v. Boston Scientific

The Supreme Court recently granted a petition for certiorari to Medtronic, appealing the Federal Circuit’s ruling in Medtronic v. Boston Scientific. In that case, the Federal Circuit held that a licensee who brings a declaratory judgment (DJ) action against a licensor bears the burden of proving non-infringement. The Supreme Court granted cert to clarify the apparent discrepancy between the Medtronic ruling and the Supreme Court’s ruling in MedImmune v. Genentech, which held that a licensee could bring a declaratory judgment action against a licensor while the licensee was still in force.

The question the court accepted is whether, in such a DJ action brought by a licensee under Medlmmune, the licensee has the burden of proving that its products do not infringe the patent, or whether (as is the case in all other patent litigation) the patentee must prove infringement.

Contributing Author

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Katherine Neville

Katherine Neville, Ph.D. is a partner at Marshall, Gerstein and Borun LLP. Her practice focuses on biotechnology patent prosecution for a range of...

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