January 22, 2014
When a licensee seeks a declaratory judgment against a patentee that its products do not infringe the licensed patent, the patentee bears the burden of persuasion on the issue of infringement.
Medtronic, Inc., Petitioner v. Mirowski Family Ventures, LLC
The case is now on Westlaw at 2014 WL 223040. The history of this issue is interesting. The Delaware Chancery court noted in 1993, that there’s a split of authority:
… as to whether a plaintiff seeking a declaratory judgment bears the burden of persuasion or whether the burden of persuasion rests with the party who would have borne that burden had it been brought as a conventional action, i.e., the declaratory defendant. 6A Moore’s Federal Practice § 57.31; WRIGHT, MILLER & KANE, Federal Practice and Procedure: Civil 2d, § 2770. The few declaratory judgment cases that have imposed the burden of persuasion on a defendant are cases involving questions of insurance coverage or patent infringement.
Rhone-Poulenc v. GAF Chemicals, CIV. A. 12848, 1993 WL 125512 (Del. Ch. Apr. 8, 1993)
In addition to procedural problems related to imposing the burden on a declaratory judgment plaintiff, the Court today addressed the issue of what the Rhone-Poulenc court called an “unwilling litigant.”
Third, an amicus supporting Mirowski fears that our holding, unlike the Federal Circuit’s rule, will “burden . . . patent owners” by permitting “a licensee . . . —at its sole discretion—[to] force the patentee into full-blown patent-infringement litigation.” Brief for Intellectual Property Owners Association as Amicus Curiae 9. The short answer to this argument, however, is that litigation can occur only in the presence of a genuine dispute, “ ‘of sufficient immediacy and reality,’ ” about the patent’s validity or its application. MedImmune, supra, at 127 (quoting Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U. S. 270, 273 (1941)). Indeed, it was Mirowski that set the present dispute in motion by accusing Medtronic of infringement. And in such an instance, we see no convincing reason why burden of proof law should favor the patentee.
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