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In the first of six patent-related cases on the U.S. Supreme Court docket this term, the Supreme Court justices ruled 9-0 in favor of medical devices manufacturer Medtronic, Inc. in its patent infringement suit against privately-owned Mirowski Family Ventures, LLC.

In its decision, the High Court ruled the burden of proving patent infringement is held by the patent holder, regardless of who is the plaintiff or defendant in the litigation. The ruling in Medtronic Inc. vs. Mirowski Family Ventures reversed an earlier decision of the U.S. Court of Appeals in the Federal District.

The two courts often differ on intellectual property matters. In the case at bar, Mirowski is the patent holder, or patentee, of heart pacemaker devices. Although Medtronic and Mirowski had a licensing agreement, the latter notified Medtronic that seven of its products infringed on Mirowski’s patents.

On December 17, 2007, Medtronic filed a motion for a declaratory judgment in the U.S. District Court in Delaware, asking that court to determine whether the medical giant had actually infringed on Mirowski’s patents. On March 30, 2011, the court ruled in favor of Medtronic. In its decision, the trial court ruled that although Mirowski was the defendant in the case, it held the burden to prove Medtronic had infringed on its patents.

Then, on September 16, 2012, the Federal Circuit reversed, remanding the case for a new trial based on its decision that the lower court misplaced the burden of proof in its ruling. Medtronic responded by filing a petition for certiorari in the U.S. Supreme Court on March 15, 2013, which the High Court granted on May 20.

In writing for the Court, Supreme Court Justice Stephen Breyer said, “A patentee ordinarily bears the burden of proving in¬fringement. This case asks us to decide whether the burden of proof shifts when the patentee is a defendant in a declara¬tory judgment action, and the plaintiff (the potential infringer) seeks a judgment that he does not infringe the patent. We hold that, when a licensee seeks a declaratory judgment against a patentee to establish that there is no infringement, the burden of proving infringement remains with the patentee.”

Tami Kamin Meyer is an attorney licensed in Ohio, both of Ohio’s federal courts and the U.S. Supreme Court.

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