Medtronic Inc. v. Boston Scientific Corp.
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
