If you own a patent, you enjoy the exclusive rights to make, use, sell, and offer for sale the underlying invention covered by that patent.  Imagine if you own a patent and you decide to license the use of it to another entity.  Then, the licensing entity embarks on an allegedly infringing activity.  Whose burden is it to prove infringement occurred (or did not occur)?  Should it be the licensor’s or the licensee’s?  It’s a hot question that recently reached the level of the U.S. Supreme Court.  It’s not often that the Supreme Court will decide a patent case.  But when it does, listen up, as each decision instantly becomes vital to understanding the changing landscape of patent law.

In January, the Supreme Court decided the case of Medtronic, Inc. v. Mirowski Family Ventures, LLC.  The case involved determining which party would have the burden of persuasion in an infringement case.  The Court convincingly overturned a decision of the Court of Appeals for the Federal Circuit.  In the Federal Circuit, the case was known by the more familiar name Medtronic, Inc. v. Boston Scientific Corporation.  Medtronic designs, manufactures, and sells medical devices.  Mirowski Family Ventures, LLC, is the owner of patents covering cardiac resynchronization therapy devices.  Mirowski Family Ventures licensed certain patents to Boston Scientific.  Medtronic also had a license to use two Mirowski patents in exchange for royalty payments.  In addition, Mirowski specified procedures for identification of the licensed products and dispute resolution between the parties.

Mirowski alleged that Medtronic infringed some of its patents by impermissibly taking some of the patented material to develop new products.  Medtronic disagreed and, in turn, sought a declaratory judgment action, whereby a court could declare that Medtronic had not infringed the Mirowski patents.  The United States District Court for the District of Delaware ruled that Mirowski, as the patent holder, had the burden of proving infringement.  But on appeal, the Court of Appeals for the Federal Circuit reversed the ruling of the District Court, finding that Medtronic, as the party bringing the declaratory judgment action, bore the burden of proof.  The Federal Circuit recognized that the patent owner normally has the burden of persuasion but nevertheless held that a party (including a licensee) seeking a declaratory judgment of non-infringement ought to bear the burden of persuasion.  The Supreme Court took up the case on appeal.

The Supreme Court reversed the decision of the Federal Circuit because of three main reasons: (1) the burden of proving infringement usually rests with the patent owner; (2) the burden of proof is a substantive part of a legal claim; and (3) the operation of the Declaratory Judgment Act is a procedural part of a legal claim.  The Supreme Court thus implied that Mirowski should not have been able to shift the burden of proving infringement, because doing so would improperly apply procedural jurisprudence to a substantive issue.  In addition, the Supreme Court pointed out that a patent owner, who would hypothetically bear the burden of proof, would be unable to succeed on an infringement action if evidence were to be found inconclusive in a particular case.  However, in that same instance, an alleged infringer would also lose a declaratory judgment action for non-infringement because of an identical inability to meet the burden of proof.  Having an unresolved question of infringement would create unacceptable harm from a practicality standpoint.

Obtaining clarity from the Supreme Court can go a long way in guiding attorneys and clients embroiled in patent litigation.  Having a uniform of standard of keeping the burden of proof with the patent owner (rather than shifting to a licensee or other party seeking a declaratory judgment) will help from a practical standpoint.  The bottom line is: if you own a patent, and you are dealing with an infringement case in any capacity, you must have sufficient proof to support a claim that another party is indeed infringing your patent in order to be successful.

Do you have a question about protecting your rights in a patent?  The McHattie Law Firm can help.

(Neeraj Joshi)