Medtronic, Inc. v. Merowski Family Ventures, LLC

The burden of persuasion in a declaratory judgment action stemming from a patent infringement suit is on the patentee.

Respondent holds patents for medical devices. Petitioner designs, makes, and sells medical devices. After Respondent alleged an infringement of its patents by Petitioner, Petitioner sought declaratory judgment. The district court, while recognizing that Respondent was the defendant, nonetheless placed the burden on Respondent, the patentee, to prove infringement. The appellate court reversed. It held that while generally the patentee bears the burden of proving infringement, here, Petitioner was a plaintiff and bears the burden of persuasion.

The Supreme Court held that the burden of persuasion in a declaratory judgment action stemming from an infringement suit is on the patentee. Further the court held that to shift the burden could result in inconsistent results between a declaratory judgment and the substantive case. That uncertainty would defeat the purpose of a declaratory judgment. Shifting the burden could also create unnecessarily complex cases. The patentee is in a better position to know the patent and how it is being infringed. Lastly, burden shifting here would go against the purpose of the Declaratory Judgment Act. Declaratory judgment is intended to provide a better option than either abandoning one’s rights or risking suit. While shifting the burden does not destroy that option, it does add an immense obstacle.