FedSoc Blog

Opinion Analysis: Justices Unimpressed with Federal Circuit’s Mastery of Federal Procedure


by Publius
Posted January 23, 2014, 2:05 PM

Ronald Mann comments for SCOTUSblog:

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.

In November 2013, the Federalist Society produced a post-argument SCOTUScast regarding the case with Gregory Dolin, Co-director, Center for Medicine and Law, University of Baltimore School of Law. You can listen to it here.

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