Federal Circuit Review – Issue 6 – 01-29-2014

Each week in the Federal Circuit Review, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

– Joe Robinson and Bob Schaffer




Supreme Court Holds Patentee Always Bears Burden on Infringement, Even in Declaratory Judgment Action

Medtronic, Inc. v. Mirowski Family Ventures, LLC, No. 12-1128, 2014 U.S. LEXIS 788 (U.S. Jan. 22, 2014) (Breyer, J.) (unanimous opinion). Click here for a copy of the opinion.

The Supreme Court held that when a licensee seeks a declaratory judgment of noninfringement against a patentee, the patentee bears the burden of persuasion on the issue of infringement. Mirowski owned patents relating to an implantable heart stimulator, and in 1991 Medtronic (indirectly) licensed Mirowski’s technology. In 2007, Medtronic filed a declaratory judgment action in Delaware, contending its new products did not infringe the patents and that the patents were invalid. Although the district court recognized that Mirowski was the defendant, it nevertheless placed the burden of proving infringement upon Mirowski. The Federal Circuit disagreed and held that plaintiff Medtronic—even in a declaratory judgment action—bore the burden when the patentee is the defendant and that patentee, like Mirowski, is “foreclosed” from asserting an infringement counterclaim by the license. Slip op. at 3 (citing 695 F. 3d 1266, 1272 (Fed. Cir. 2012)).

The Supreme Court reversed the Federal Circuit’s decision and concluded that the burden of persuasion on the issue of infringement lies “with the patentee, just as it would be had the patentee brought an infringement suit.” Id. at 6. The Court cited three legal propositions to support its conclusion. First, “it is well established that the burden of proving infringement generally rests upon the patentee” that wants to enforce the patent. Id. Second, “the operation of the Declaratory Judgment Act [is] only procedural, leaving substantive rights unchanged.” Id. at 7 (citation omitted). And, related to the second proposition, “the burden of proof is a substantive aspect of a claim.” Id. (emphasis added). So, taken together, the burden of proving infringement remains with the patentee. Consequently, the Court reversed the Federal Circuit’s judgment and remanded for further proceedings.


The following opinions are not reported in this newsletter: 

Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., No. 2013-1117, 2014 U.S. App. LEXIS 1152 (Fed. Cir. Jan. 22, 2014) (Prost, J.) (affirming grant of defendant’s motion for partial summary judgment that patentee could not claim priority it sought because two intermediate applications in the chain of priority failed to specifically reference all earlier filed applications in the chain). Click here for a copy of the opinion.



The Author

Joseph Robinson & Robert Schaffer

Joseph Robinson & Robert Schaffer  

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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