Burden of proof in patent case.

Patent proceedings: Determination of burden of proof

 Instrument of Patent

When a licensee seeks a declaratory judgment against a patentee that its products do not infringe the licensed patent, the patentee bears the burden of persuasion on the issue of infringement. [Pp. 6–11.]

This conclusion is strongly supported by three settled legal propositions: First, a patentee ordinarily bears the burden of proving infringement, see, e.g., Agawam Co. v. Jordan, 7 Wall. 583, 609; second, the “operation of the Declaratory Judgment Act” is only “procedural,” Aetna Life Ins. Co. v. Haworth, 300 U. S. 227 , leaving “substantive rights unchanged,” Beacon Theatres, Inc. v. Westover, 359 U. S. 500 ; and third, “the burden of proof” is a “ ‘substantive’ aspect of a claim,” Raleigh v. Illinois Dept. of Revenue, 530 U. S. 15 –21. Practical considerations lead to the same conclusion. Shifting the burden based on the form of the action could create postlitigation uncertainty about a patent’s scope. It may also create unnecessary complexity by compelling a licensee to prove a negative. Finally, burden shifting is difficult to reconcile with the Declaratory Judgment Act’s purpose of ameliorating the “dilemma” posed by “putting” one challenging a patent’s scope “to the choice between abandoning his rights or risking” suit, MedImmune, Inc. v. Genentech, Inc., 549 U. S. 118 . To the extent that the Federal Circuit’s burden shifting rule makes the declaratory judgment procedure disadvantageous, that rule recreates the dilemma that the Declaratory Judgment Act sought to avoid. [Pp. 6–9.]

Ordinary default rule to determine burden of proof:

Several arguments to the contrary are unconvincing. First, Schaffer v. Weast, 546 U. S. 49 , which noted the “ordinary default rule” that “plaintiffs” have the “risk of failing to prove their claims,” does not support the Federal Circuit’s conclusion. Schaffer was not a declaratory judgment case, and it described exceptions to its basic burden of proof rule. For reasons explained in this case, declaratory judgment suits like this one are an exception to Schaffer’s default rule. Second, the fact that the Federal Circuit limited its holding to the circumstance where a license forecloses an infringement counterclaim by a patentee cannot, by itself, show that the holding is legally justified. Third, contrary to one amicus’ concern that this Court’s holding will permit licensees to force patent holders into full-blown infringement litigation, such litigation can occur only when there is a genuine and sufficiently “immedia[te]” dispute about a patent’s validity or application, MedImmune, supra, at 127. Here, Mirowski set this dispute in motion by accusing Medtronic of infringement, and there is no convincing reason why burden of proof law should favor the patentee. General considerations relating to the public interest in maintaining a well-functioning patent system are, at most, in balance, and do not favor changing the ordinary burden of proof rule. [Pp. 9–11.]

See: Medtronic, Inc. v. Mirowski Family Ventures, LLC