medtronic mirowski family ventures llc argued november decided january petitioner medtronic designs makes sells medical devices respondent mirowski family ventures llc owns patents relating implantable heart stimulators licensing agreement permits medtronic practice certain mirowski patents exchange royalty payments specifies procedures identify products covered license resolve disputes parties pursuant procedures mirowski notified medtronic belief several medtronic products infringed licensed patents medtronic challenged assertion infringement declaratory judgment action accumulating disputed royalties escrow account distribution prevailing party district concluded mirowski party asserting infringement burden proving infringement mirowski met burden federal circuit disagreed acknowledged patentee normally bears burden proof concluded patentee declaratory judgment defendant like mirowski foreclosed asserting infringement counterclaim continued existence licensing agreement party seeking declaratory judgment namely medtronic bears burden persuasion held federal circuit lack jurisdiction case title gives federal district courts exclusive jurisdiction civil action arising act congress relating patents gives federal circuit appellate jurisdiction case jurisdiction district based whole part section declaratory judgment act extend federal courts jurisdiction skelly oil phillips petroleum federal courts determining declaratory judgment jurisdiction often look character declaratory judgment defendant threatened action public serv utah wycoff whether defendant hypothetical coercive action necessarily present federal question franchise tax bd cal construction laborers vacation trust southern medtronic acted consistent understanding rights seeks establish declaratory judgment suit ceasing pay royalties mirowski terminate license bring suit infringement suit arise federal patent law patent law creates cause action christianson colt industries operating thus declaratory judgment action avoids hypothetical threatened action also arises federal patent law see nat bank los angeles franchise tax bd pp licensee seeks declaratory judgment patentee products infringe licensed patent patentee bears burden persuasion issue infringement pp conclusion strongly supported three settled legal propositions first patentee ordinarily bears burden proving infringement see agawam jordan wall second operation declaratory judgment act procedural aetna life ins haworth leaving substantive rights unchanged beacon theatres westover third burden proof aspect claim raleigh illinois dept revenue practical considerations lead conclusion shifting burden based form action create postlitigation uncertainty patent scope may also create unnecessary complexity compelling licensee prove negative finally burden shifting difficult reconcile declaratory judgment act purpose ameliorating dilemma posed putting one challenging patent scope choice abandoning rights risking suit medimmune genentech extent federal circuit burden shifting rule makes declaratory judgment procedure disadvantageous rule recreates dilemma declaratory judgment act sought avoid pp several arguments contrary unconvincing first schaffer weast noted ordinary default rule plaintiffs risk failing prove claims support federal circuit conclusion schaffer declaratory judgment case described exceptions basic burden proof rule reasons explained case declaratory judgment suits like one exception schaffer default rule second fact federal circuit limited holding circumstance license forecloses infringement counterclaim patentee show holding legally justified third contrary one amicus concern holding permit licensees force patent holders infringement litigation litigation occur genuine sufficiently immedia te dispute patent validity application medimmune supra mirowski set dispute motion accusing medtronic infringement convincing reason burden proof law favor patentee general considerations relating public interest maintaining patent system balance favor changing ordinary burden proof rule pp reversed remanded breyer delivered opinion unanimous opinion notice opinion subject formal revision publication preliminary print reports readers requested notify reporter decisions washington typographical formal errors order corrections may made preliminary print goes press medtronic petitioner mirowski family ventures llc writ certiorari appeals federal circuit january justice breyer delivered opinion patentee ordinarily bears burden proving infringement agawam jordan wall case asks us decide whether burden proof shifts patentee defendant declaratory judgment action plaintiff potential infringer seeks judgment infringe patent hold licensee seeks declaratory judgment patentee establish infringement burden proving infringement remains patentee reverse federal circuit determination contrary set forth simplified version facts parties medtronic firm among things designs makes sells medical devices mirowski family ventures llc firm owns patents relating implantable heart stimulators medtronic mirowski entered agreement permitting medtronic practice certain mirowski patents exchange royalty payments less simplified form mirowski entered license agreement eli lilly sublicensed mirowski patents medtronic guidant eli lilly successor interest present purposes shall ignore eli lilly guidant parties mirowski side using mirowski refer agreement also provided mirowski gave notice medtronic new medtronic product infringe mirowski patent medtronic choice app medtronic simply cure nonpayment royalties ibid pay royalties time challenge assertion infringement mirowski patents declaratory judgment action ibid medtronic course might ignore agreement decide pay royalties case mirowski right terminate icense wished bring infringement action parties entered agreement slightly modified procedure resolving disputes medtronic received timely written notice infringement chose pursue declaratory judgment action challenging infringement accumulate disputed royalties escrow account prevailing party declaratory judgment action receive royalties parties found midst infringement dispute mirowski gave medtronic notice believed seven new medtronic products violated various claims contained two patents related devices cause heart ventricles contract simultaneously heart beats medtronic thought products infringe mirowski patents either products fell outside scope patent claims patents invalid medtronic brought declaratory judgment action federal district delaware sought declaration products infringe mirowski patents patents invalid agreement mirowski provided medtronic paid relevant royalties escrow account district recognized mirowski defendant action nonetheless believed mirowski part asserting infringement bore burden proving infringement medtronic boston scientific supp del see sea industries dacor ca fed burden always patentee show infringement bench trial found mirowski proved infringement either directly doctrine equivalents since mirowski patentee bore burden proof lost supp appeals federal circuit considered burden proof question came opposite conclusion held medtronic declaratory judgment plaintiff bore burden acknowledged normally patentee accused infringer bears burden proving infringement burden normally shift even patentee counterclaiming defendant declaratory judgment action nonetheless appeals believed different rule applies patentee declaratory judgment defendant like mirowski foreclosed asserting infringement counterclaim continued existence license case appeals held party seeking declaratory judgment noninfringement namely medtronic bears burden persuasion ibid medtronic sought certiorari asking us review federal circuit burden proof rule light importance burdens proof patent litigation granted petition ii begin jurisdictional matter amicus claims must vacate federal circuit decision lacked jurisdiction amicus agrees parties gives federal district courts exclusive jurisdiction civil action arising act congress relating patents emphasis added moreover version governing appeal gives federal circuit exclusive appellate jurisdiction case jurisdiction district based whole part section amicus says determining whether case civil action arising act congress relating patents must look nature action declaratory judgment defendant namely patentee mirowski brought absence declaratory judgment action amicus adds significant argument jurisdiction patent infringement action rather action damages breach contract namely action breach licensing contract patent infringement central issue see brief tessera technologies amicus curiae agree amicus declaratory judgment act extend jurisdiction federal courts skelly oil phillips petroleum also agree federal courts determining declaratory judgment jurisdiction often look character threatened action public serv utah wycoff say ask whether coercive action brought declaratory judgment defendant mirowski necessarily present federal question franchise tax bd cal construction laborers vacation trust southern agree amicus characterization threatened coercive action mirowski might brought patent licensing agreement specifies medtronic stops paying royalties mirowski terminate contract bring ordinary patent infringement action action arise federal patent law federal patent law creates cause action christianson colt industries operating amicus says infringement suit unlikely relevant question relevant question concerns nature threatened action absence declaratory judgment suit medtronic believes seeks establish declaratory judgment suit owe royalties products noninfringing medtronic act belief paying royalties bringing declaratory judgment action mirowski terminate license bring ordinary federal patent law action infringement see brief respondent acknowledging medtronic chosen pay royalties subjected suit infringement consequently declaratory judgment action avoids threatened action also arises federal patent law see franchise tax supra wycoff supra see also medimmune genentech concluding article iii requirement patent licensee faced threat suit ceased making payments license agreement notwithstanding licensee continued royalty payments rendered prospect suit remote nonexistent reason believe hypothetical threatened action properly characterized action arising act congress relating patents iii turn question presented patent paying royalties escrow account licensing agreement seeks declaratory judgment products covered infringe patent therefore owe royalties products suit bears burden proof precise burden persuasion must patentee prove infringement must licensee prove noninfringement view burden persuasion patentee patentee brought infringement suit simple legal logic resting upon settled case law strongly supports conclusion well established burden proving infringement generally rests upon patentee see imhaeuser buerk burden prove infringement never shifts alleged infringer charge denied plea answer agawam infringement affirmative allegation made complainant burden proving upon see also sea industries burden always patentee show infringement chisum burden proof factual issues relating infringement rests upon patent owner long considered operation declaratory judgment act procedural aetna life ins haworth leaving substantive rights unchanged beacon theatres westover see also vaden discover bank skelly oil noting limited procedural purpose declaratory judgment act held burden proof aspect claim raleigh illinois dept revenue director office workers compensation programs greenwich collieries assignment burden proof rule substantive law garrett burden proof part substance plaintiff claim considered mere incident form procedure taken together three legal propositions indicate licensee declaratory judgment action burden proving infringement remain patentee several practical considerations lead conclusion shift burden depending upon form action create postlitigation uncertainty scope patent suppose evidence inconclusive alleged infringer loses declaratory judgment action failed prove noninfringement alleged infringer others might continue engage allegedly infringing behavior leaving patentee bring infringement action burden shifts patentee might lose action evidence inconclusive failed prove infringement sides might lose infringement leaving infringement question undecided creating uncertainty among parties others seek know products processes free use example fanciful restatement second judgments says relitigation issue say infringement decided one suit precluded subsequent suit burden persuasion shifted party preclusion sought adversary restatement second judgments rather ailure one party carry burden persuasion issue establish issue favor adversary otherwise burden persuasion issue later litigation wright miller cooper federal practice procedure ed thus declaratory judgment suit example failed achieve object provide immediate definitive determination legal rights parties aetna supra moreover shift burden least occasion create unnecessary complexity making difficult licensee understand upon theory patentee infringement claim rests complex patent contain many pages claims limitations patent holder better position alleged infringer know able point product process infringes claim patent however alleged infringer may work dark seeking declaratory judgment complaint negate every conceivable infringement theory finally burden shifting difficult reconcile basic purpose declaratory judgment act medimmune genentech case similarly concerned patent licensee brought declaratory judgment action patentee accused infringement wrote act dilemma posed putting one challenges patent scope choice abandoning rights risking suit quoting abbott laboratories gardner absence declaratory judgment procedure medtronic face precise dilemma medimmune describes either medtronic abandon right challenge scope mirowski patents stop paying royalties risk losing ordinary patent infringement lawsuit thereby risk liability treble damages attorney fees well injunctive relief see providing injunctive relief treble damages exceptional cases attorney fees remedies patent infringement medimmune declaratory judgment action rescues medtronic dilemma federal circuit burden shifting rule deprive medtronic right seek declaratory judgment create significant obstacle use action makes declaratory judgment procedure compared say refusing pay royalties extent recreates dilemma declaratory judgment act sought avoid made clear explain strong reason creating obstacle convinced arguments raised contrary first federal circuit thought found support recent case schaffer weast case referred ordinary default rule placing upon plaintiffs risk failing prove claims added plaintiffs normally parties seeking relief medtronic mirowski declaratory judgment plaintif schaffer however declaratory judgment case schaffer described exceptions basic burden proof rule element claim fairly characterized affirmative defens burden proof may shifted defendants ordinary rule based considerations fairness place burden upon litigant establishing facts peculiarly within knowledge quoting new york reasons set forth part supra declaratory judgment suits like one issue constitute exception basic rule schaffer described second federal circuit emphasized holding applied limited circumstance infringement counterclaim patentee foreclosed continued existence license fact federal circuit opinion limited however support conclusion limited described often present patent licensee faces ordinary disputed claim infringement circumstance virtually identical medimmune found declaratory judgment action constitutionally permissible event fact rule scope limited show rule legally justified third amicus supporting mirowski fears holding unlike federal circuit rule burden patent owners permitting licensee sole discretion force patentee litigation brief intellectual property owners association amicus curiae short answer argument however litigation occur presence genuine dispute sufficient immediacy reality patent validity application medimmune supra quoting maryland casualty pacific coal oil indeed mirowski set present dispute motion accusing medtronic infringement instance see convincing reason burden proof law favor patentee public interest course favors maintenance patent system public also paramount interest seeing patent monopolies kept within legitimate scope precision instrument mfg automotive maintenance machinery patentee allowed exact royalties use idea beyond scope patent monopoly granted laboratories university foundation icensees may often individuals enough economic incentive litigate questions patent scope lear adkins general public interest considerations balance favor change ordinary rule imposing burden proving infringement upon patentee reasons judgment federal circuit reversed case remanded proceedings consistent opinion ordered