Supreme Court Decides that Patent Licensors Must Prove Infringement in Licensee Challenges

In a unanimous decision in Medtronic v. Mirowski Family Ventures LLC (“Mirowski”), the U.S. Supreme Court reversed the Federal Circuit Court of Appeals and held that patent owners bear the burden of proving infringement even when the case is brought by a licensee that is not in breach of its license.

Medtronic had licensed several patents from Mirowski for implantable pacemakers. While continuing to pay royalties into an escrow account, Medtronic sued and sought a declaration that several of its products were not covered by the licensed patents. The Delaware district court found for Medtronic because Mirowski failed to prove that Medtronic’s products were infringing, but the Federal Circuit reversed on appeal and held that Medtronic needed to prove that its products did not infringe Mirowski’s patents.

The Supreme Court, however, agreed with the district court that, even though the licensee brought the challenge, the burden of proving infringement still remained with Mirowski. As the Court explained, as between the patent owner and the licensee, the patent owner is better suited to explain how its patent is infringed.

In our opinion, this decision provides a further incentive for patent licensees to challenge unfavorable license arrangements.