A petitioner has the ultimate burden of persuasion to prove unpatentability of the challenged claims by a preponderance of the evidence. 35 U.S.C. §§ 316(e) and 326(e).
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015). In an IPR, petitioner has the ultimate burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifts to patent owner. In addition, petitioner has the initial burden of production—a burden of going forward with the evidence. The burden of production shifts to patent owner once petitioner comes forward with evidence establishing prior art. There is no presumption that an asserted reference patent is entitled to the benefit of the filing date of provisional application, or an earlier-filed non-provisional application if the asserted reference patent issued from a CIP application. A reference patent is only entitled under § 119(e)(1) or § 120 to claim the benefit of the filing date of a provisional application or earlier-filed nonprovisional application if the disclosure of the prior application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.
Trivascular, Inc. v. Samuels, 812 F.3d 1056 (Fed. Cir. 2016). The Board is not bound by any determination made in the institution decision. “There is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial” (quoting and comparing 35 U.S.C. § 314(a) and § 316(e)).
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016). The Federal Circuit reversed the Board’s decision of obviousness, holding that the Board improperly shifted the burden of proof to patent owner to prove patentability. The burden of proof in post-grant challenges involves two burdens: the burden of persuasion and the burden of production. The burden of persuasion is the ultimate burden assigned to a party who must provide something to a specified degree of certainty. The burden of production entails producing additional evidence and presenting persuasive argument based on new evidence or evidence already on record. Petitioner continues to bear the burden of proving unpatentability after institution (i.e., the burden of persuasion), and must do so by a preponderance of the evidence at trial. The Federal Circuit rejected the PTO’s argument that patent owner should have the burden of production to produce evidence of nonobviousness after the Board found, at institution, a reasonable likelihood that petitioner would prevail in demonstrating the unpatentability of the challenged claims. The PTO’s proposed burden shifting is at odds with precedent establishing that different analyses are applied at institution and at the final written decision. The ultimate burden of proving unpatentability remains with petitioner throughout the trial. The Federal Circuit also held that the Board cannot adopt arguments that petitioner could have made but did not. A petitioner cannot satisfy its burden of proving obviousness by “mere conclusory statements.” The Board “must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” A party does not have to request reconsideration from the Board. Nothing in the statute or rules requires a party to request rehearing even though the rules permit such a request.
Polaris Wireless, Inc. v. Trueposition, Inc., IPR2013-00323, Paper 9 (PTAB Nov. 15, 2013). In an IPR, the burden is on petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. The Board does not presume that challenged claims are entitled to the earlier filing dates of ancestral applications which do not share the same disclosure as the challenged patent. But, in such circumstances, the issue first has to be raised by petitioner in its petition, by identifying the claims (including their specific limitations) allegedly lacking 35 U.S.C. § 112, first paragraph, written description and enabling disclosure support for the challenged claims in the priority application. Then, patent owner has to make a sufficient showing of entitlement to the earlier filing date, in a manner that is commensurate in scope with the specific points and contentions raised by petitioner.
Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66, at 19 (PTAB May 1, 2014). Patent Owner submitted a Declaration Under 37 C.F.R. 1.131 to antedate an asserted reference. The Declaration was signed by only one of the inventors. The Board rejected petitioner’s argument that the Declaration must be signed by all the inventors. The Board emphasized that although patent owner bears the burden of production in antedating a reference, the burden of persuasion to prove unpatentability of the challenged claims remains with the petitioner, in accordance with 35 U.S.C. § 316(e).
BAE Sys. Info. and Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC, IPR2013-00175, Paper 45 (PTAB June 19, 2014). Patent owner did not submit declaration testimony to challenge the declaration testimony of petitioner’s expert. The Board therefore treated the declaration testimony of petitioner’s expert as unrebutted. Attorney argument is not evidence.
Amazon.com, Inc. v. Personalized Media Comms., LLC, IPR2014-01533, Paper 16 (PTAB Apr. 20, 2015). The Board denied institution for two grounds of challenge on the basis that petitioner did not demonstrate that the asserted references were prior art against the patent because petitioner did not demonstrate that the references were entitled to their earlier priority dates. Petitioner sought rehearing of the Board’s determination that the references were not demonstrated to be prior art. The Board denied petitioner’s rehearing request, asserting that petitioner did not satisfy its burden to show that there was no break in a reference patent’s priority claim and that the reference patent is entitled to a specific priority date. A petitioner must identify, specifically, the disclosure in ancestral applications that do not share the same disclosure and which allegedly show § 112 support for the relied-upon priority date. Petitioner should not expect the Board to search the record and cull together the evidence necessary to support petitioner’s arguments.
Masterimage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015) (precedential). In a motion to amend, patent owner has the burden of demonstrating that proposed substitute claims are patentable over the prior art of record. Once patent owner has set forth a prima facie case of patentability of its proposed substitute claims over the prior art of record, the burden of production shifts to petitioner.
Apple, Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369, Paper 14 (PTAB Aug. 12, 2015). Although the Board takes into account a patent owner’s preliminary response, if such a response is filed under 37 C.F.R. § 42.108(c), the filing of a preliminary response is optional, and the Board does not construe a patent owner’s failure to raise any particular argument in a preliminary response as a concession or waiver.
Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-00552, Paper 79 (PTAB Nov. 30, 2015). The disqualification of a reference as prior art against the challenged patent under 35 U.S.C. § 103(c) involves a shifting burden of production. Once petitioner establishes that the reference qualifies as prior art under 35 U.S.C. § 102(e), the burden shifts to patent owner to demonstrate that 35 U.S.C. § 103(c) applies. First, patent owner must establish the date on which the invention of the challenged patent was made. Here, the parties agreed that date was filing date of a provisional application that led to the challenged patent. Next, patent owner must establish that, as of that date, both the challenged patent and the reference patent were either “owned by the same person or subject to an obligation of assignment to the same person.” Patent owner was unable to prove the existence of a written employment agreement that contractually would require the inventors to assign rights to the earlier patent owner. But patent owner successfully persuaded the Board that “the common law right of an employer in the inventions of an employee who was employed to invent” applied to show common ownership. Based on this showing, the Board determined that the reference patent was not prior art against the challenged patent under 35 U.S.C. § 103(c).
Global Tel*Link Corp. v. Securus Techs., Inc., IPR2014-00825, Paper 36 (PTAB Dec. 2, 2015). The burden of production shifts to patent owner to disqualify a reference as prior art under 35 U.S.C. § 103(c) if petitioner demonstrates that the reference qualifies as prior art under 35 U.S.C. § 102(e) and, in combination with one or more prior art references, would render the challenged claims obvious under 35 U.S.C. § 103(a). Patent owner must establish the date on which the invention of the challenged patent was made. This date is presumed to be the effective filing date of the patent, unless there is credible evidence to the contrary. Patent owner must also establish that the claimed invention and prior art reference were “owned or subject to an obligation of assignment” to the same person or entity as of the date of invention. Here, patent owner produced assignment and corporate records showing common ownership at the time of the invention of the challenged patent. The burden of production then shifts to petitioner to present evidence or arguments showing that the patent or prior art are not subject to 35 U.S.C. § 103(c).
BioDelivery Sciences Int’l, Inc. v. Monosol Rx, LLC, IPR2015-00165, Paper 70 (PTAB Mar. 24, 2016). The Board disagreed with petitioner’s argument that patent owner should be collaterally estopped from contesting the Board’s prior finding in an appeal of an inter partes reexamination of a related patent that an asserted reference inherently discloses a claimed feature. Under the doctrine of collateral estoppel, also known as issue preclusion, a judgment on the merits in a first proceeding precludes relitigation in a second proceeding of issues actually litigated and determined in the first proceeding. However, issue preclusion is premised on principles of fairness and, therefore, issue preclusion may be inappropriate when the forum in the second action affords the party against whom preclusion is asserted procedural opportunities in the presentation and determination of the issues that were not available in the first action and could likely result in the issue being differently determined. The instant trial, including cross-examination of witnesses, offers a significant procedural opportunity to the parties that was not available in the prior inter partes reexamination proceeding of the related patent. Further, issue preclusion is not appropriate because the Board’s finding in the prior inter partes reexamination proceeding addressed different claim features.
Instradent USA, Inc. v. Nobel Biocare Services AG, IPR2015-01784, Paper 14 (PTAB Feb. 17, 2016). The Board denied institution, in part, because petitioner improperly relied upon the scale of features illustrated in the drawings of an asserted reference. Patent drawings do not define the process proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.
Alarm.com Inc. v. Vivint, Inc., IPR2015-01995, Paper 14 (PTAB Apr. 4, 2016). The Board denied institution of an anticipation ground because, under the holding in Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011), it is not enough to find that a prior art device is capable of being modified to operate in a manner that would anticipate the claims. Although the asserted reference may indeed perform the same functions as the claim feature in actual operation, mere probabilities or possibilities fall short of demonstrating that asserted reference necessarily discloses the claimed features, as is required for a ground based on anticipation.
Apple Inc. v. e-Watch, Inc., IPR2015-00412, Paper 50 (PTAB May 6, 2016). The Board disagreed with patent owner’s argument that petitioner could not present alternative challenges asserting that a prior art reference anticipates the claim and that, if the reference does not disclose a particular limitation, the claim would have been obvious over that reference in view of another reference. Nothing precludes petitioner from making a second argument in the alternative in that manner, so long as what is conveyed is clear and unambiguous. 37 C.F.R. § 42.104 does not prohibit petitioner from pursuing alternative challenges.