Justices Lift 'Burden of Proof' From Medical Device Company

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Wilmer Cutler Pickering Hale and Dorr's Seth Waxman
Wilmer Cutler Pickering Hale and Dorr's Seth Waxman

The U.S. Supreme Court on Wednesday ruled unanimously in favor of the medical device company Medtronic Inc. in a patent dispute over who has the burden of proof in certain infringement lawsuits.

The decision in Medtronic Inc. v. Mirowski Family Ventures reversed a ruling of the U.S. Court of Appeals for the Federal Circuit—not unusual in the ongoing relationship between the two courts over intellectual property issues. It was the first patent case to be decided this term, with five more patent cases on the court’s docket this term.

While the case did not attract as much attention as other patent cases in recent years, it resolved an issue that threatened to cause “uncertainty, controversy, and waste” in patent litigation, according to a group of legal scholars that filed a brief supporting Medtronic.

The decision is a win for former Solicitor General Seth Waxman, now the appellate practice leader at Wilmer Cutler Pickering Hale and Dorr, who represented Medtronic and argued the case in November. He told the justices then that who has the burden of proof or persuasion in patent cases is “surpassingly important.”

By longstanding tradition in most litigation, the patent holder or patentee has the burden of proving that someone else has infringed the patent. In the case before the court, the patentee was Mirowski Family Ventures, which holds patents on heart pacemaker devices. Under a licensing agreement with Medtronic, Mirowski in 2006 notified Medtronic that seven of Medtronic’s products infringed on Mirowksi patents.

Medtronic then went to court against Mirowski, seeking a declaratory judgment that there was no infringement. It was, in effect, a “mirror-image” suit, in which the alleged infringer was the plaintiff and the patent holder was the defendant, instead of the other way around.

Nonetheless, the judge assigned patent holder the burden of proving infringement, even though it was the defendant. Mirowski lost, prompting a challenge on the burden issue.

The Federal Circuit reversed, ruling that Medtronic should have the burden of proving non-infringement in such a case. It reasoned that in a declaratory judgment action, the defendant—Mirowski, the patentee—is foreclosed from making a counterclaim of infringement. Medtronic appealed to the high court.

Writing for the court, Justice Stephen Breyer said, “In our view, the burden of persuasion is with the patentee, just as it would be had the patentee brought an infringement suits.”

Breyer said that procedural rules dictate that when the burden shifts, as Mirowski wanted, the decision is not binding on future litigation on the issue, creating long-term uncertainty about infringement of the patents at issues.

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