Medtronic, LLC: Legal Case Analysis

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In Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843 (2014), the Supreme Court held that when a licensee seeks a declaratory judgement against a patentee that its products do not infringe on the licensed patent, the licensee does not bear the burden of proof. The burden of proof lies with the patentee, who must show that the licensee’s products do in fact infringe on its patent.
The Facts
Medtronic, Inc., is a firm that makes and sells medical devices. Mirowski Family Ventures, LLC is a firm that owns patents relating to implantable heart stimulators. A 1991 agreement licensed several Mirowski patents to Medtronic and that Medtronic several options in the event Mirowski gave notice that it believed one of Medtronic’s
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To shift the burden depending on the type of the litigation would create post litigation uncertainty about the scope of the patent because a licensee could fail to prove noninfringement in a declaratory judgment action but prevail in an infringement action. Secondly, shifting the burden would create unnecessary complexity by making it difficult for the licensee to understand the theory upon which the patentee’s infringement claims rest. A patent may contain many pages of claims and limitations, thus a patent holder is in the best position to know, and be able to point out, where how and why a product infringes on the claim of the patent. Finally, the Court reasoned that burden shifting is difficult to reconcile with the basic purpose of the Declaratory Judgement Act. The “purpose” of that Act is to “ameliorate” the “dilemma” posed by putting “one who challenges a patent’s scope “to the choice between abandoning his rights or risking suit”. Medtronic would have to abandon its right to challenge the scope of Mirowski’s patents or it would have to stop paying royalties and risk losing an ordinary patent infringement lawsuit. Medtronic is saved from this dilemma by the declaratory judgment action.
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Weast, 546 U.S. 49 (2005) to shift the burden of proof from the patentee. That case, espoused the “ordinary default rule” which placed the “risk of failing to prove their claims” on the ‘plaintiffs’. The Court however found that the “ordinary default rule” did not support the Federal Circuit’s conclusion. Schaffer was not a declaratory judgment case and it described exceptions to its burden of proof rule. The Court stated that for the aforementioned reasons declaratory judgement actions like the one at issue in this case were also an exception to the Schaffer rule. The lower court emphasized that its holding applied only in “circumstance when an infringement counterclaim by a patentee is foreclosed by the continued existence of a license. The Court found that the “limited circumstance” described by the Federal Circuit is often present when a patent licensee faces an ordinary but disputed claim of infringement. This “limited circumstance” is “virtually identical” to MedImmune, where the Court found that a declaratory action was permissible. In any case the Court found that limiting the scope was not by itself justification for the legality of the
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