Medtronic Inc. v. Boston Scientific Corp. (12-1128)

argument 12-1128

Medtronic Inc. v. Boston Scientific Corp.

Supreme Court of the United States 55 min 5 speakers 8 chapters transcribed 6 days ago official recording ↗

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What is the fundamental rule about the burden of proof in patent infringement cases?

John G. Roberts 0:02

We'll hear argument this afternoon in Case 12-1128, Medtronic v. Boston Scientific Corporation. Mr. Waxman.

Mr. Waxman 0:10

MR. Thank you, Mr. Chief Justice, and may it please the Court. Patent law places the burden of proving infringement on the patentee. And until this case, it was settled that the burden does not shift if the issue arises in a declaratory action seeking a judgment of non-infringement. The Federal Circuit imposed a different rule in suits brought under metamune, where the party seeking a declaration of non-infringement is a licensee. That was error. Allocation of the burden of proof inheres in the governing substantive law, while the Declaratory Judgment Act is procedural only and does not change substantive rights. The burden of proof in metimmune actions, like all other declaratory actions, remains where it would have rested in the equivalent coercive suit brought by that patentee.

Samuel A. Alito 1:07

This concerns just the risk of non-persuasion. It doesn't concern the burden of production?

Mr. Waxman 1:13

That's correct. That's the issue in this case, although, as we point out, the word burden of proof is I think the word burden of proof used in the opinion below could be thought to be addressed to both points, but the parties agree that the relevant consideration here is the burden of proof and that trial judges do retain discretion to make rules about ordering — the ordering of proof in that case. MR. Well,

Samuel A. Alito 1:43

if that's all that's involved, then the case doesn't seem to amount to quite as much as one might have thought otherwise. Does it? Suppose the patentee has the burden of production, so they would have to explain why there was infringement. They would have to introduce proof of infringement. And the only difference is who wins when the fact finder thinks that it's exactly an equipoise.

Mr. Waxman 2:07

Right. Well, that, of course, was not what happened — not what the respondent maintained should happen in this case. But taking your question as it is, this Court has pointed out repeatedly — that where the burden of persuasion rests is very often outcome determinative. And that is certainly true in patent cases. What the jury is told about who has the burden of persuasion is surpassingly important in many cases, including many patent cases. And that's the issue in this case. I mean, the substantive, the reason why the Federal Circuit erred is clearly doctrinal, which is this Court has said over and over again that burdens of proof, like standards of proof, are substantive. They adhere in the substantive right.

Mr. Waxman 3:02

And the Court has also said repeatedly that the declaratory judgment action is procedural only and doesn't change substantive rights. But I think if you go to the policy question, Justice Alito, reversing the burden in a declaratory action would impair the purpose and utility of the Declaratory Judgment Act, which was enacted to provide a mechanism for determining how the equivalent coercive action would be resolved without requiring the declaratory judgment plaintiff to subject itself to retrospective liability. And indeed, shifting the burden would threaten the issue-preclusive effect of the declaratory judgment. Frustrating

John G. Roberts 3:48

— JUSTICE BREYERER. It seems to me we can — all that may be true, but we need to cut down to the basic issue, which is metimmune changes all that. The idea is you're moving along with the license, everybody's happy. All of a sudden, you jump into court. Why shouldn't you have the burden as the party who seeks to disturb the status quo?

Mr. Waxman 4:07

Well, the reason, Mr. Chief Justice, is the reason that the burden of proof is substantive and a declaratory judgment action under the Act is aimed not to change any substantive rights. And that's why all of the decided cases in this area, except for the one below, left the burden exactly where substantive patent law left

Unknown 4:31

it. Does it help your answer or does it — limit the theory of your case too much to say that in this case, there is a controversy satisfying declaratory judgment rules because the patent holder gave notice of potential or of infringement.