November 2013

Looking Ahead

On November 5, 2013, the U.S. Supreme Court heard oral argument in Medtronic Inc. v. Boston Scientific Corp., No. 12-1128, regarding whether the burden of proof in a DJ action should be on the patent owner to provide infringement or on the accused infringer to prove noninfringement.  Ordinarily, a patent owner bears the burden of proving infringement, and a DJ action does not shift that burden.  However, the Federal Circuit held that for MedImmune DJ actions (where a licensee of a patent seeks a DJ that the patent is invalid), the party bringing the DJ action, as the party seeking to change the status quo under the license, has the burden of proving noninfringement.  Medtronic Inc. appealed the Federal Circuit’s ruling, arguing that it is well settled that the burden does not shift in standard DJ actions, and an exception should not be made for MedImmune DJ actions.

The Supreme Court is expected to rule on the case by the end of June 2014.  Stay tuned to future editions of Last Month at the Federal Circuit to see how the Supreme Court’s decision will affect Federal Circuit analysis.