Opinion analysis: Justices unimpressed with Federal Circuit’s mastery of federal procedure curriculum
You can be sure things won’t go well for the Federal Circuit when the Justices put a case in the “procedure” box instead of the “patents” box. And that’s what happened in the unanimous reversal of the Federal Circuit yesterday in Medtronic v. Mirowski Family Ventures. The specific issue in the case is who bears the burden of persuasion when a user of technology files suit against a patent-holder, seeking a declaratory judgment that its actions do not infringe a particular patent. You could pigeonhole this as a “declaratory judgment” case or a “patent” case, and the Court pretty clearly thought of it as the former.
Writing for a unanimous Court, Justice Breyer’s first opinion of the Term reads like the comments of a law school professor on a subpar Federal Courts paper. After stating the issue, he explains that “[s]imple legal logic, resting upon settled case law, strongly supports [reversal].” He then offers three legal reasons, followed by a devastating practical consideration. First, following the traditional rule that the plaintiff has the burden of proof, the “burden of proving infringement generally rests upon the patent[-holder]” seeking to enforce the patent. Second, “the operation of the Declaratory Judgment Act [is] only procedural, leaving substantive rights unchanged.” Third, “the burden of proof is a substantive aspect of a claim.”
To Justice Breyer, the conclusion followed as surely as night follows day: “Taken together, these three legal propositions indicate that, in a licensee’s declaratory judgment action, the burden of proving infringement should remain with the patent[-holder].”
As if that weren’t enough, Justice Breyer added a telling practical problem: if the declaratory judgment burden of proof is on the alleged infringer, but the enforcement action burden of proof is on the patent-holder, then neither suit would preclude the other. A licensee that loses its declaratory judgment action justifiably “might continue to engage in the allegedly infringing behavior, leaving it to the patent[-holder] to bring an infringement action.” Because the patent-holder would have the burden of proof in that action, the patent-holder well might fail to prove infringement even though it had prevailed in the declaratory judgment action. “So both sides might lose as to infringement, leaving the infringement question undecided, creating uncertainty [about] just what products and processes they are free to use.” Justice Scalia had pressed the absurdity of that result particularly emphatically at the oral argument, so it is no surprise to see it in the opinion.
Often, brief unanimous opinions like Medtronic sink without a trace, rarely to be read or cited again. This opinion, though, well might have a future – the straightforward, undiverted analysis of the burden of proof question would be perfect for the section of a civil procedure text on declaratory judgments. As an added bonus, the opinion also includes an introductory section walking through the basic jurisdictional rules to explain why this action “arises under” federal law for purposes of federal question jurisdiction. Who could ask for more in an opinion so terse!
PLAIN LANGUAGE: When a patent-holder sues someone else for infringing his patent, he has the burden to prove that the patent was indeed infringed. Sometimes, even before the patent-holder files suit, an individual or company using related technology will want to know whether its products infringe the patent — perhaps because they don’t want to lose in a possible suit for infringement. Fortunately, they don’t have to wait for the patent-holder to sue them. Instead, they can file a separate suit for a declaratory judgment, asking the court to “declare” what would happen if the patent-holder did sue them for infringement. The question in this case is who has to prove infringement in that kind of case, and the Justices said that the person that holds the patent has the burden. The Justices explained that the burden should be the same in the ordinary action by the patent-holder as in the special “declaratory” judgment action.