Patent holder bears burden of proving infringement in licensee declaratory judgment action for non-infringement

In Medtronic, Inc. v. Mirowski Family Ventures, LLC, the Supreme Court held 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."

This case disturbs the balance of power between a patent holder and a licensee in which the agreement between the two parties is mutually beneficial.  Licensees may now consider filing a declaratory judgment for non-infringement and thereby force the patent holder to prove that the licensed products or processes infringe the patents at issue. 

According to this case, the patent holder cannot assert any counterclaims in this action.  Therefore, the licensee assumes little risk in filing. 

This scenario may discourage patent holders from entering into licensee agreements. 

At a minimum, patent holders must consider this burden while negotiating future licensing agreements.

Call Sanders Law Firm, PLLC 336-724-4707 to discuss patent and trademarking issues and infringements. Sanders Law Firm PLLC will also serve you to register your trademarks.