On Nov. 5, 2013, the Supreme Court heard oral argument in Medtronic, Inc. v. Boston Scientific Corporation. At issue is whether in a declaratory judgment action brought by a licensee under MedImmune, Inc. v. Genentech, Inc., the licensee has the burden to prove that its products do not infringe the patent, or whether the patentee must prove infringement. Based on the Court’s questioning at oral argument, the Court appears poised yet again to reverse the Federal Circuit in a patent case and hold that the patentee bears the burden of proof in such actions.
In MedImmune, the Court held that a licensee who believes its products do not infringe the licensed patent and therefore are not subject to royalty payments is not required to terminate its license agreement before filing a declaratory judgment action that the underlying patent is not infringed. But in MedImmune, the Court did not address which party bears the burden of proof on the issue of infringement/non-infringement. Although the general rule is that the patentee bears this burden, in the underlying appeal, the Federal Circuit carved out a “post-MedImmune” exception to this general rule for cases involving patent licensees. In particular, the Federal Circuit held that because the declaratory judgment plaintiff is the only party seeking the aid of the court in MedImmune-like circumstances, that party must bear the burden of proving non-infringement.