Justices Address Burden of Proving Infringement
WASHINGTON (CN) - In challenging patents for a device used in cardiac resynchronization therapy, Medtronic did not have to prove noninfringement, the Supreme Court ruled Wednesday.
The action at hand concerns a biventricular pacer, or CRT device, that increases the heart's efficacy by causing both a patient's left and right ventricles to contract simultaneously as the heart beats.
Dr. Morton Mower memorialized the device with two patents, RE'119 and RE'897, which Mirowski Family Ventures exclusively licenses to Guidant Corp.
While licensing the RE'119 patent from Guidant's predecessor, Medtronic began paying royalties into escrow as it challenged the patent's validity.
Medtronic then filed separate federal complaints against Guidant; its parent, Boston Scientific; and Mirowski Family Ventures (MFV).
After a 2010 bench trial, a federal judge in Delaware granted Medtronic a judgment of noninfringement. The court also entered a judgment of validity and enforceability in favor of MFV.
Both Medtronic and MFV appealed, leading the Federal Circuit to vacate the lower court's decision in September 2012.
The three-judge panel noted that the District Court had improperly put the burden of proving infringement on MFV.
Though Medtronic had filed the declaratory judgment action, the unanimous Supreme Court concluded Wednesday that burden of proving infringement did in fact lie with MFV.
"Simple legal logic, resting upon settled case law, strongly supports our conclusion," Justice Stephen Breyer wrote for the court. "It is well established that the burden of proving infringement generally rests upon the patentee."
The 14-page opinion emphasizes how the shifting of that burden "could create postlitigation uncertainty about the scope of the patent."
"Suppose the evidence is inconclusive, and an alleged infringer loses his declaratory judgment action because he failed to prove noninfringement," Breyer wrote. "The alleged infringer, or others, might continue to engage in the same allegedly infringing behavior, leaving it to the patentee to bring an infringement action. If the burden shifts, the patentee might lose that action because, the evidence being inconclusive, he failed to prove infringement. So, both sides might lose as to infringement, leaving the infringement question undecided, creating uncertainty among the parties and others who seek to know just what products and processes they are free to use." (Emphasis in original.)
Breyer also noted the unnecessary complexity that could arise.
"A complex patent can contain many pages of claims and limitations," he wrote. "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." (Parentheses in original.)
The Declaratory Judgment Act supports this assignment of the burden as well, according to the ruling.
This law puts the "one who challenges a patent's scope 'to the choice between abandoning his rights or risking' suit," Breyer wrote, citing the 2007 ruling MedImmune Inc. v. Genentech.
"In the absence of the declaratory judgment procedure, Medtronic would face the precise dilemma that MedImmune describes," he added. "Either Medtronic would have to abandon its right to challenge the scope of Mirowski's patents, or it would have to stop paying royalties, risk losing an ordinary patent infringement lawsuit, and thereby risk liability for treble damages and attorney's fees as well as injunctive relief."