On May 20, 2013, the U.S. Supreme Court agreed to review a U.S. Court of Appeals for the Federal Circuit decision (IP Update, Vol. 15, No. 10) that in an action for a declaratory judgment of non-infringement, a patent licensee bears the burden of proof in those cases where the license remains in effect, notwithstanding the declaratory judgment challenge; i.e., if the patent owner has essentially no infringement counterclaim it can bring. Medtronic Inc. v. Boston Scientific Corp., U.S., No. 12-1128, May 20, 2013.

The question presented for certiorari is as follows:

In Medlmmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007), this Court ruled that a patent licensee that believes that its products do not infringe the patent and accordingly are not subject to royalty payments is “not required … to break or terminate its … license agreement before seeking a declaratory judgment in federal court that the underlying patent is … not infringed.”

The question presented is whether, in such a declaratory judgment action brought by a licensee under MedImmune, the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement.