RESPONDENT: Boston Scientific Corp. et al.
LOCATION: United States District Court for the District of Delaware
DOCKET NO.: 12-1128
DECIDED BY: Roberts Court (2010-2016)
CITATION: 571 US (2014)
GRANTED: May 20, 2013
ARGUED: Nov 05, 2013
DECIDED: Jan 22, 2014
Arthur I. Neustadt - for the respondents
Curtis E. Gannon - Assistant to the Solicitor General, Department of Justice, for the United States, as amicus curiae, supporting the petitioner
Seth P. Waxman - for the petitioner
Facts of the case
Between 1969 and 1980, Dr. Morton Mower worked with Dr. Mieczyslaw Mirowski to develop the implantable cardioverter defibrillator (ICD) and the cardiac resynchronization therapy device (CRT), both devices that are meant to treat different kinds of heart failure. Mirowski Family Ventures (MFV) held both patents and licensed them to Guidant Corp. In 1991, Medtronic, a manufacturer of medical devices and equipment, entered into a sublicense agreement with Eli Lilly & Co., Guidant Corp's predecessor-in-interest regarding these patents. The agreement obligated MFV to inform Medtronic which items were covered by which patents, and if Medtronic disagreed, Medtronic could retain patent rights and file for a declaratory judgment of non-infringement on the patents. In October and November of 2007, MFV identified several Medtronic products that it believed infringed on its patents, and Medtronic subsequently sued for a declaratory judgment of non-infringement.
In the bench trial in district court, the court, relying on precedent, stated that the patent holder bears the burden of proving that infringement occurred and found in favor of Medtronic. MFV appealed and argued that the burden falls on the alleged patent infringer to prove that infringement did not occur. The United States Court of Appeals for the Federal Circuit held that, because Medtronic is the party seeking relief from the court, it bears the burden to prove that it did not infringe on MFV's patents.
In patent license cases, does the burden of proof rest on the patent holder to prove that an infringement occurred?
Media for Medtronic, Inc. v. Boston Scientific Corp.Audio Transcription for Oral Argument - November 05, 2013 in Medtronic, Inc. v. Boston Scientific Corp.
Audio Transcription for Opinion Announcement - January 22, 2014 in Medtronic, Inc. v. Boston Scientific Corp.
Justice Breyer has our opinion this morning in Case 12-1128 Medtronic versus Mirowski Family Ventures.
When a patent owner sues a defendant claiming patent infringement, the patent owner bears the burden of proofing his case.
If he doesn't prove infringement the alleged infringer wins.
This case requires us to decide who bears the burden of proof in the adverse procedural situation when an alleged infringer brings the declaratory judgment action against the patent owner.
The plaintiff in the declaratory judgment action seeks a declaratory judgment that he did not infringe the patent.
Now, this case is actually quite simple but it just sounds complicated when we start out these little words but just think of A suing B.
A, the patentee sues B saying he's infringing my patent.
He has to prove it.
Now what happens if instead B sues A?
He says I want the judgment that I'm not infringing the patent.
Same question but the adverse procedural situation.
Does that change mean that B bears the burden of proving he didn't infringe instead of A having to prove that B did infringe?
Now right now if you have that, you have the answer and the answer is of course it doesn't make any difference.
The patentee's burden stays with the patentee and that follows almost ineluctably from three basic legal propositions.
First, the patentee normally bears the burden of proving infringement because he is normally the one to sue B, right.
Second, the burden of proof is a substantive aspect of a claim and third a declaratory judgment is opposed to a normal suit going the other way concerns only the procedural aspects of a claim.
So the logical conclusion is the burden of proof stays in the same place and that's what we said and we say that partly for the logical reasons I said and also partly for a certain practical reasons which we go into in the opinion.
So we hold the burden of proof stays the same.
The patentee has to prove his case irrespective of the form and will reverse a federal circuit decision to the contrary and it's unanimous.