Over the last few years, the Supreme Court has taken a renewed interest in patent law. After years of ignoring the issue, and leaving it in the hands of the appeals court for the federal circuit (CAFC -- which was established, in part, to hear all patent appeals), the Supreme Court has taken to regularly smacking down the CAFC, and telling it that it doesn't understand basic patent law. It's now happened again. The court has reversed yet another CAFC decision
, this time concerning who has the burden of proving infringement. This was as case involved Medtronic filing for a declaratory judgment that it did not infringe on someone else's patent (Medtronic, it should be noted, has a history of being quite a patent bully
itself at times). A district court had noted that the patent holder, in this case the Mirowski Family Ventures, has the burden of proof on showing infringement. CAFC said that since Medtronic brought the declaratory judgment suit that it was actually Medtronic's burden to prove that it did not infringe
. The Supreme Court has reversed in an easy unanimous decision.
Simple legal logic, resting upon settled case law, strongly
supports our conclusion. It is well established that the
burden of proving infringement generally rests upon the
The ruling notes that a declaratory judgment filing is just a procedural issue, which doesn't change the basic substantive rights. Thus, it should be viewed as if it were the patent holder bringing the claim, leaving the burden on them. The court also points out that it would be kind of ridiculous to put the burden first on the party filing for declaratory judgment that it doesn't infringe if there's no proof that there's infringement in the first place. It would leave the plaintiff trying to prove a negative in the dark...
A patent holder is in a better position than an alleged infringer to know, and to be able to point out, just where, how, and why a product (or process) infringes a claim of that patent. Until he does so, however, the alleged infringer may have to work in the dark, seeking, in his declaratory judgment complaint, to negate every conceivable infringement theory.
Perhaps most interesting is, at the very end of the decision, Justice Breyer clearly notes that the purpose of the patent system is to benefit the public interest -- and that requires a "well-functioning" patent system, rather than a broken down patent system. As it notes, "patent monopolies" need to be "kept within their legitimate scope."