US Supreme Court: Burden of proof of infringement on patent holder

Ruling came in an appeal by medical devices maker Medtronic against patent holder Mirowski Family Ventures

The U.S. Supreme Court has upheld that it is up to the patent holder ordinarily to prove infringement in a lawsuit, a ruling that could have vast implications on the litigious technology industry.

The lawsuit traces its origin to a patent dispute between medical devices maker Medtronic and patent holder Mirowski Family Ventures. Medtronic, which was a licensee of Mirowski since 1991 through its sub-licensee, asked the U.S. District Court for the District of Delaware in 2007 for a declaratory judgment that its new products did not infringe Mirowski's patents and that the patents were invalid.

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A patentee ordinarily bears the burden of proving infringement, Justice Stephen G. Breyer wrote, while delivering the opinion of the Supreme Court. "This case asks us to decide whether the burden of proof shifts when the patentee is a defendant in a declaratory judgment action, and the plaintiff (the potential infringer) seeks a judgment that he does not infringe the patent."

Mirowski had given Medtronic notice that it believed seven new Medtronic products violated various claims contained in two of its patents. The patents were related to devices that cause the heart's ventricles to contract simultaneously as the heart beats. As provided by an earlier agreement with Mirowski, Medtronic paid all the relevant royalties into an escrow account when filing the lawsuit.

The court in Delaware ruled that it was up to Mirowski to prove infringement, and after a bench trial found that Mirowski had not proved infringement. The decision was over-ruled by the U.S. Court of Appeals for the Federal Circuit, which said it was up to Medtronic to prove its case, as it bore the "burden of persuasion."

The Supreme Court on Wednesday upheld the decision of the district court, stating that it holds 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."

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