IP Views

Casting the First Stone: A Shift in the Burden of Proof in Patent Infringement Case

Mar 7, 2014
By: Jefferson P. Ferrer

The United States (US) Supreme Court held in the case of Medtronic, Inc. vs. Mirowski Family Ventures, LLC, that the patent owner who is made defendant in an action for declaratory judgment by an alleged infringer has the initial burden of proving his claim of infringement.

Medtronic Incorporated (Medtronic) was the licensee to the patent rights of Mirowski Family Ventures LLC (Mirowski) over implantable heart simulators. The licensing contract provided both parties with remedies in the event of possible infringement of Mirowski’s patents – one of which allowed Medtronic to file an action for declaratory judgment against Mirowski.

Mirowski notified Medtronic that it was of the belief that the latter’s inventions infringed on two of its registered patents. Instead of Mirowski filing a case for infringement, it was Medtronic which filed an action for declaratory judgment pursuant to its right granted by the licensing agreement. The District Court ruled that Mirowski, despite being made defendant in the case for declaratory judgment, still had the burden of showing that there was infringment in the first place. For Mirowski’s failure to present proof of its claims, the Court ruled in favor of Medtronic.

Acting upon Mirowski’s appeal, the Federal Circuit Court reversed the lower Court’s decision saying that in an action for declaratory judgment of non-infringement, the “burden of persuasion” falls upon the licensee-plaintiff and not upon the patent right holder-defendant. The decision emphasized on the action for declaratory judgment was the only action to be dealt with.

The Circuit Court’s decision was reversed upon certiorari. The Supreme Court said that “burden of proof” is a substantive matter which cannot be easily overturned by a procedural rule such as the US Statute on Declaratory Judgments. Aside from this, the Court noted that the purpose of this is to appraise the licensee of the specific claims of the patent holder. Otherwise, the former would not have enough information to be in a position to sufficiently argue and prove non-infringment in the action for declaratory judgment. In a way, it avoids leaving the licensee “fighting back in the dark” against practically an infinite number of theories of infringement.

In sum, the decision rendered by the US Supreme Court upholds the long standing rule that “the one who states a claim should prove it”. The decision looked at the dispute and not at the action filed in court. As the US Supreme Court explained:

“Indeed, it was Mirowski that set the present dispute in motion by accusing Medtronic of in­fringement. And in such an instance, we see no convinc­ing reason why burden of proof law should favor the patentee.”

The Philippine Counterpart: Action for Declaratory Relief

The Philippines has a similar remedy to that of declaratory judgments. A person wishing to obtain a declaration of his or her rights as provided by any written instrument or by statute may file a petition pursuant to Rule 63 of the Rules of Court which provides for actions for declaratory relief and similar reliefs. Section 1 of said rule states that:

Section 1. Who may file petition. — Any person interested under a deed, will, contract or other written instrument, or whose rights are affected by a statute, executive order or regulation, ordinance, or any other governmental regulation may, before breach or violation thereof bring an action in the appropriate Regional Trial Court to determine any question of construction or validity arising, and for a declaration of his rights or duties, thereunder.

Comparing actions for declaratory relief under our Rules of Court and declaratory judgments under the United States Federal law, we learn that both remedies have similar requirements for application. As to declaratory judgments under the United States law, it was said that:

Like any other federal court plaintiff, a claimant seeking relief under the (Declaratory Judgments) Act also must satisfy the three requirements for constitutional standing.[1] (description supplied)

It was further noted that:

The Declaratory Judgment Act was not intended as a device for rendering mere advisory opinions. The case must involve a controversy that is substantial and concrete, must touch the legal relations of parties with adverse interests, and must be subject to specific relief through a decree of conclusive character.[2](emphasis supplied)

To avail of the counterpart remedy in the Philippines, the person seeking such declaration must file a petition showing proof of compliance with the following requisites:

xxx (1) there must be a justiciable controversy; (2) the controversy must be between persons whose interests are adverse; (3) that the party seeking the relief has a legal interest in the controversy; and (4) that the issue is ripe for judicial determination.[3]

The statement “subject to specific relief through a decree of conclusive character” serves only to reiterate that declaratory judgments ought not to be availed of as an advisory opinion on the application of laws upon a set of hypothetical facts.[4] The requisite “ripe for judicial adjudication” found in Philippine case law means just about the same as said statement. [5]

Prayer for Injunction and Other Affirmative Reliefs

The United States statute on declaratory judgments allows courts to grant other affirmative reliefs such as an injunctive writ to go alongside the declaration sought for.

The case is different with respect to the Philippine rule on actions for declaratory relief. An injunction cannot be issued in such actions. The action is limited to its purpose of making a declaration as to rights and duties of the parties. The reason for this rests upon the requisites and purpose of an injunctive writ.

As provided in the Rules of Court, a preliminary injunction is a provisional remedy available during and ancillary to an action.[6] Injunctions can either direct that some act be done in which case it shall be known as a mandatory injunction.[7] It can also direct that a person or entity desist from doing an act in which case it is known as a prohibitory injunction.[8]

The Philippine Supreme Court held that an injunction may issue upon proof of the following:

(1) the applicant must have a clear and unmistakable right, that is a right in esse;
(2) there is a material and substantial invasion of such right;
(3) there is an urgent need for the writ to prevent irreparable injury to the applicant; and
(4) no other ordinary, speedy, and adequate remedy exists to prevent the infliction of irreparable injury.[9]

A look at the requisites would show that injunctive relief and action for declaratory relief are mutually exclusive of the each other. Issuance of an injunction requires showing of a clear and unmistakable right where the action for declaratory relief seeks to shed light on uncertainty as to rights. In other words, a declaratory relief is limited to just that – a declaration of rights and obligations. Nothing more, nothing less.

Medtronic Case Set in the Philippines

The age old adage that the burden of proof rests with the claimant and not with the defendant has been applied by Philippine courts even to the present day. The courts have applied this with regard only to the case they are hearing and without regard of “who actually set the dispute in motion”. Supposing the facts of the Medtronic case were set in the Philippines, a different decision would have been reached by the Philippine courts. The Philippine court would have required the alleged infringer-petitioner and not the claimant-respondent in the action for declaratory relief to prove the allegation that no such infringement existed. As they say: “he who asserts, not he who denies, must prove”[10].

Ei incumbit probotio qui dicit, non qui negat.[11]


[1] Federal Manual for Legal Aid Attorneys, Sargent Shriver National Center on Poverty Law, available at http://federalpracticemanual.org/node/53#13, last accessed 25 February 2014

[2] Supra note 1, citing Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240-41.

[3] Office of the Ombudsman v. Ibay, G.R. No. 137538, 3 September 2001, 364 SCRA 281, 286, citing Galarosa v. Valencia, G.R. No. 109455, 11 November 1993, 227 SCRA 729, 737.

[4] See Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 241 (1937)

[5] To be ripe for judicial determination or to constitute the “ripening seeds” of a controversy, it must appear that , under the facts of the case, there is a threatened litigation in the immediate future, which litigation is imminent and inevitable unless prevented by the declaratory relief sought. (Velarde v. Social Justice Society, G.R. No. 159357 (2004)).

[6] See Willard Riano, Civil Procedure: A Restatement for the Bar, 2nd Bantam Edition (2009), pp. 564-565.

[7] Supra note vi.

[8] Id.

[9] Supra note vi citing Sps. Nisce vs. Equitable PCI-Bank, G.R. No. 167434 (2007) and Guy vs. CA, G.R. No. 165849 (2007).

[10] US v. De La Torre, G.R. No. L-17165 (1921)

[11] Supra note x.

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