Who proves patent infringement
Medtronic v. Mirowski Family Ventures
In brief
The Supreme Court overturned the appeals court’s ruling and sent the case back, deciding that Mirowski had to prove infringement.
- Where it stands
- Decided
Decided 8-0 · January 22, 2014 · Opinion by Justice Breyer
- What it’s about
- Medtronic, a patent licensee, asked a court to declare that its products did not infringe patents held by Mirowski Family Ventures.
- Who it affects
- When a patent licensee asks a court to declare its products do not infringe a licensed patent, the patent owner must convince the court that infringement occurred.
Summary: written with AI from the case record.
What it's about
The Supreme Court ruled that the patent owner must prove infringement, overturned the appeals court’s ruling, and sent the case back to that court (remanded).
The case concerned who must prove infringement when a patent licensee, rather than the patent owner, asks a court for a ruling that its products do not infringe.
Question presented
In patent license cases, does the burden of proof rest on the patent holder to prove that an infringement occurred?
What the Court decided
Holding
1. The Federal Circuit did not lack subject-matter jurisdiction in this case. Title 28 U. S. C. §1338(a) gives federal district courts exclusive jurisdiction over “any civil action arising under any Act of Congress relating to patents,” and §1295(a)(1) gives the Federal Circuit appellate jurisdiction over any case where jurisdiction in the district court “was based, in whole or in part, on section 1338.” The De - claratory Judgment Act does not “extend” the federal courts’ “jurisdiction,” Skelly Oil Co. v. Phillips Petroleum Co., 339 U. S. 667, 671; and federal courts determining declaratory judgment jurisdiction often look to the “character” of the declaratory judgment defendant’s “threate 2. 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. Pp. 6– 11. 695 F. 3d 1266, reversed and remanded.
- Result
- Reversed
The Court's reasoning
The Court said that when a licensee asks for a ruling that its products do not infringe a licensed patent, the patent owner must convince the court that infringement occurred.
The vote
What's next
The case returns to the Federal Circuit for further proceedings under the Supreme Court’s ruling.
Documents
Opinions
Docket activity
New analysis added
AI analysis generated: Case Briefing
AI analysis generated: Decision Record
Case data updated: summary, question_presented, generation_metadata
Case data updated: question_presented, extraction_metadata
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Opinion added: Opinion
More questions
- Did the Supreme Court also decide whether the Federal Circuit had jurisdiction?
- Yes. It ruled that the Federal Circuit had jurisdiction to hear the case.
Sources
Primary materials plus reporting. Best-effort analysis: this explainer relies on a mix of primary materials and trusted secondary sources. Official filings and opinions remain authoritative.