Our weekly SoCal IP Institute meeting on Monday, January 27, 2014 will be a discussion of the burden of persuasion of infringement in a declaratory judgment action and contributory infringement under the ACPA . Brief synopses appear below.

Medtronic, Inc. v. Mirowski Family Ventures LLC, Case No. 12-1128 (U.S. SCt. 1/22/2014) (available here). Mirowski owns patents related to implantable heart stimulators. Medtronic entered into a licensing agreement with Mirowski which allowed Medtronic to practice Mirowski’s patents in exchange for royalty payments. Mirowski later informed Medtronic that many of Medtronic’s products infringed Mirowski’s patents. Medtronic then brought a declaratory judgment action against Mirowki. The district court held that Mirowski had the burden of proving infringement, since they were the party asserting infringement. On appeal, the Federal Circuit reversed. The Supreme Court reversed the Federal Circuit’s decision and held that the patentee holds the burden of persuasion to provide infringement.

Petronas v. GoDaddy.com, Case No. 12-15584 (9th Cir. 12/4/2013) (available here). Plaintiff Petronas sued GoDaddy.com alleging that GoDaddy.com engaged in contributory cybersquatting under the ACPA. The district court held that the ACPA did not provide a cause of action for contributory cybersquatting. The 9th Circuit affirmed the district court’s decision.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 27, 2014, at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.