Significant Patent Case Ruling by Supreme Court a Win for WilmerHale

Significant Patent Case Ruling by Supreme Court a Win for WilmerHale


On January 22, 2014, the US Supreme Court ruled unanimously in favor of WilmerHale client Medtronic Inc., in Medtronic Inc. v. Mirowski Family Ventures, L.L.C.—the first patent decision of the court's 2013 Term. This significant patent case clarifies that, when a licensee sues a patent owner for a declaratory judgment of non-infringement, the patentee retains the burden of proving patent infringement.

"We are very pleased with the Supreme Court's ruling in this case. The decision brings clarity to this area of litigation by confirming that the burden of proving infringement remains where it always does, with the patent holder," said WilmerHale Partner Mark Fleming, a lead attorney for the case.  

Medtronic, the declaratory-judgment plaintiff and a licensee of several patents belonging to Mirowski Family Ventures, argued that the patentee bears the burden, just as it does in all other patent litigation. The district court agreed, but the Federal Circuit reversed, reasoning that although patentees normally bear the burden even in declaratory judgment actions by the alleged infringer, the burden is reversed when the potential infringer is a licensee of the patent.

The Supreme Court's ruling reversed the Federal Circuit's decision, adopting much of the reasoning from WilmerHale's briefing on Medtronic's behalf.

WilmerHale Partner Seth Waxman argued the appeal before the Supreme Court and was supported by a team that included WilmerHale Partners Paul Wolfson and Mark Fleming, and former Senior Associates Carolyn Chachkin and Weili Shaw, and former Counsel Brian Fletcher.