Federal Circuit Rules Petitioners Bear Burden of Proof to Establish Unpatentability of Claim Amendments in Inter Partes Reviews

Authored by Brian S. Mudge and Andrew D. Kasnevich

In a long-awaited decision, the Federal Circuit, sitting en banc, has ruled that petitioners in AIA patent trials bear the burden of proving that proposed amended claims are unpatentable. The decision, Aqua Products v. Matal,[1] upends the PTAB’s practice, developed in prior Board opinions (and approved in Federal Circuit panel opinions), requiring patent owners to prove that amended claims are patentable.

Key Takeaway:  The Federal Circuit’s en banc ruling means that, at least in the near term, and possibly the long term as well, petitioners will have the burden of proving amended claims are unpatentable. While patent owners will continue to have an initial burden of production in drafting and supporting a motion to amend, the Board may not place the ultimate burden of persuasion on a patent owner to establish patentability of amended claims. Rather, once a patent owner has provided sufficient information, as provided by PTO rules, to justify a motion to amend, the burden of persuasion will lie with the petitioner to prove that amended claims are not patentable. This change is likely to have a substantial impact on the rate of successful motions to amend, which will impact AIA trials and district court proceedings.

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SCOTUS to Decide 2: Are AIA Patent Reviews Constitutional?

Authored by Brian S. Mudge and Clifford A. Ulrich

For the second time in less than a month, the U.S. Supreme Court on June 12, 2017 granted certiorari in a case involving inter partes review. In Oil States v. Greene’s Energy Group, the Court has agreed to decide whether administrative patent trials, launched in 2012 by the America Invents Act, are Constitutional.[1] The case will decide if the AIA patent review program, which has resulted in over 1,500 final decisions declaring some or all challenged claims unpatentable, remains viable, or whether validity challenges must be heard by the district courts. A ruling that AIA patent trials are unconstitutional would result in substantial change to the current patent litigation landscape and strategy.

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SCOTUS to Decide: Is PTAB Required to Determine Patentability of All Claims Challenged in an IPR Petition?

Authored by Brian S. Mudge and Clifford A. Ulrich

On May 22, 2017, the United States Supreme Court granted certiorari in SAS Institute, Inc. v. Lee, agreeing to decide whether the PTAB is required to issue a final written decision with respect to patentability of all claims challenged in a petition for inter partes review (IPR) or whether it may issue a final written decision with respect to only some of the claims challenged in the petition. The case may significantly affect how the PTAB handles IPR proceedings.

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PTAB Nixes Reliance on Technical Report: Not Publication

Authored by Brian Mudge

We have previously written about disputes regarding whether a prior art reference qualifies as a publication in AIA trials.[1] In a recent decision, the Board ruled that a prior art reference did not qualify as a publication under §102(a). The case, Activision Blizzard v Acceleration Bay,[2] rejected petitioner’s attempt to rely on a 1999 technical report allegedly published by University of California / San Diego (“UCSD”).

Key Takeaway:  This case demonstrates that the PTAB will adhere to demanding requirements for petitioners to establish that a reference qualifies as a prior art publication. Petitioners should be prepared to provide detailed evidence showing a prior art reference was publicly accessible before the priority date of a challenged patent. Meanwhile, patent owners should take advantage of opportunities to challenge the public accessibility of references, particularly where the evidence and arguments in a petition are conclusory; such challenges can be effective in a preliminary response and may derail a case before trial is instituted.

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Patent Owner’s Challenge to Wayback Machine Evidence Fails

Authored by Brian S. Mudge

We have previously written about disputes over prior art used in an AIA patent trial. A recent case presented challenges to materials obtained from the Internet. The case, Johns Manville Corp. v. Knauf Insulation, Inc.,[1] involved a petitioner’s reliance on exhibits downloaded from the Wayback Machine as prior art. In its final written decision, the PTAB determined that Wayback Machine exhibits were sufficiently authenticated and reliable to withstand a motion to exclude. However, the Board’s ruling did not specifically address one aspect of the challenge relating to a party, Alexa Internet, which initially captured the Internet pages that were archived.

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