Earlier this yr, in E. I. du Pont de Nemours & Co. v. Synvina C.V. (Fed. Cir. 2018) (“Dupont v. Synvina”), the Federal Circuit discovered that the Patent Trial and Appeals Board (“the Board”) had erred in holding that in an inter partes evaluation (IPR), the burden to supply proof of patentability didn’t shift to the patentee. Apparently, in every of the earlier two years the courtroom additionally had event to deal with burden shifting in IPRs. In In re Magnum Oil Instruments Worldwide, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (“Magnum Oil”), the Board was discovered to have been improper in deeming that when it institutes an IPR – which requires concluding that the petitioner has met the “reasonable likelihood of success” commonplace – that conclusion operated to shift the burden of manufacturing proof of patentability to the patentee. Additionally, in Aqua Merchandise, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (“Aqua Products”), the courtroom thought-about whether or not a patentee might amend claims throughout an IPR provided that it accepted the burden of proving that the substitute claims have been patentable. Such was the Board’s place in the IPR. Upon attraction to the Federal Circuit, an en banc courtroom issued a divided opinion remanding the matter to the Board for assessing patentability of the substitute claims with out putting the burden of persuasion on the patent proprietor.
Taking a look at Magnum Oil and Dupont v. Synvina, in the IPR that led to Magnum Oil, the Board shifted the burden of manufacturing proof of patentability to the patentee when it shouldn’t have carried out so. Conversely, in the IPR that led to Dupont v. Synvina, the Board did not shift the burden when it ought to have achieved so. It’s noteworthy that in every case, the Board was following what it believed was the Federal Circuit precedent. This text sheds mild on the points underlying the confusion over burden shifting in Magnum Oil and Dupont v. Synvina. Magnum Oil is taken into account first.
In Magnum Oil, challenger McClinton asserted two grounds of obviousness of Magnum’s patent claims counting on a number of references, referred to right here by their single letter abbreviations. The primary floor of obviousness was based mostly on the main reference, “A”, and references “C” and “K” and the second was based mostly on the main reference, “L”, and references “C” and “K”. Reference L purportedly discloses the similar related options as the main reference A, so for the second floor, McClinton largely included by reference the arguments for A, C, and Okay, changing A with L. The Board discovered the challenger to have established “a reasonable likelihood of success” in its petition based mostly on the second floor and instituted an IPR. In the trial that adopted, the Board discovered all challenged claims apparent. Magnum appealed to the Federal Circuit and argued that the Board had erred as a result of neither McClinton nor the Board had established a prima facie foundation for the rejection. In response to Magnum, the challenger had failed to point out motivation to mix L with C and Okay, incorporation of L by reference was improper, and L fails to reveal key limitations of the claims.
In its opinion, the Federal Circuit outlined phrases relating to the burdens of proof as follows: “[T]here are two distinct burdens of proof: a burden of persuasion and a burden of production. The burden of persuasion is the ultimate burden assigned to a party who must prove something to a specified degree of certainty, such as by a preponderance of the evidence or by clear and convincing evidence . . . . A distinct burden, the burden of production may entail producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record.” Magnum Oil at 1375. Additional, the courtroom referred to 35 U.S.C. § 316(e), observing that “[i]n an inter partes review, the burden of persuasion is on the petitioner to prove unpatentability by a preponderance of the evidence,” and that this burden by no means shifts to the patent proprietor. Id.
Importantly, the Federal Circuit identified that the Board was flawed in contending that the burden of manufacturing or the burden of going ahead with proof shifts between the petitioner and the patent proprietor as quickly as the Board institutes an IPR. For this incorrect place, the Board had relied on Dynamic Drinkware, LLC v. Nat’l Graphics Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“Dynamic Drinkware”), by which, in the context of building earlier precedence over a cited reference, the courtroom had famous that the patentee bore the burden of building the precedence, i.e., the burden shifted.
The courtroom defined that in Dynamic Drinkware the shifting of the burden of manufacturing was warranted as a result of the patentee had affirmatively sought to determine a proposition not relied on by the patent challenger and subsequently, not a essential predicate for the asserted unpatentability of the claims. In different phrases, the patentee was providing an affirmative protection to rebut the challenger’s case for unpatentability. Magnum Oil, nevertheless, was totally different and the notion of burden-shifting inapposite, the courtroom defined, as a result of in Magnum Oil, the patentee disputed whether or not the challenger had met its burden of proving obviousness, i.e., the existence of a prima facie case was in dispute.
The courtroom noticed usually that the place the solely query introduced was whether or not due consideration of the 4 Graham elements rendered claims apparent, no burden shifted from the patent challenger to the patentee. Such was the case in Magnum Oil as a result of the solely points to be thought-about in that case have been what the prior artwork disclosed, whether or not there would have been a motivation to mix the prior artwork, and whether or not that mixture rendered the patented claims apparent. Subsequently, the burden didn’t shift.
On a broader degree, the courtroom emphasised that the choice to institute an IPR and the remaining written determination have been “two very different analyses,” every making use of a “qualitatively different standard,” implying thereby that the burden shifting in the two conditions weren’t similar. The courtroom famous that at the level of deciding whether or not to institute an IPR, the Board is contemplating the matter preliminarily with out the advantage of a full report and is free to vary its view of the deserves after additional improvement of the report, if satisfied that its preliminary inclinations have been improper. Subsequently, shifting of burden to the patentee at this stage shouldn’t be warranted. Addressing Magnum Oil, the courtroom famous that the Board’s last written determination was replete with examples the place, slightly than requiring the challenger to show its assertion of obviousness, the Board improperly shifted the burden to Magnum to disprove obviousness.
Turning now to Dupont v. Synvina, on this case, in distinction to Magnum Oil, the Board was discovered to have erred in not shifting the burden of manufacturing proof of patentability to the patentee. Paradoxically, the Board believed that it was following the precedent set in Magnum Oil. Trying to information, DuPont, a competitor of Synvina, petitioned for an IPR of Synvina’s patent directed to a way of manufacturing a chemical product utilizing sure particular response circumstances (temperature, strain, solvent, and catalyst). The IPR petition was based mostly on obviousness of claims on a number of grounds, two of which have been accepted by the Board for instituting the IPR. The prior artwork disclosed making the product underneath response circumstances that overlapped with these required by the challenged claims. After a trial, the Board issued a last written determination holding claims not apparent, stating as purpose that none of the references expressly taught a course of during which the chemical product at difficulty was produced underneath the response circumstances recited in the claims. Moreover, the Board interpreted Magnum Oil as prohibiting burden-shifting to the patentee in an IPR and did not ask Synvina to supply proof of nonobviousness. In accordance with the Federal Circuit, each discovering the claims apparent for the cause given and not shifting the burden of proof to Synvina have been errors.
The courtroom first set forth the relevant authorized precept: the place the basic circumstances of a declare are disclosed in the prior artwork, it isn’t creative to find the optimum or workable ranges by routine experimentation. Utilized to overlapping ranges, a prima facie case of obviousness sometimes exists when the ranges of a claimed composition overlap the ranges disclosed in the prior artwork, the courtroom famous. The prima facie case could also be rebutted by the patentee in a number of methods together with by means of proof of sudden outcomes and educating away.
Magnum Oil and Dynamic Drinkware didn’t overturn the procedural scheme for overlapping vary instances, the courtroom noticed. In Magnum Oil there was a dispute as as to if a prima facie had in any respect been made. As such, the burden of manufacturing couldn’t shift to the patentee. On the different hand, in Dynamic Drinkware, the patentee affirmatively sought to determine a proposition not relied on by the patent challenger for asserting unpatentability (i.e., the existence of a prima facie was not unsure). Subsequently, the burden of manufacturing to show the affirmative protection routinely shifted to the patentee.
Evaluating IPR to district courtroom litigation, the courtroom clarified that whereas totally different evidentiary requirements utilized between district courtroom litigation and IPRs, that distinction didn’t alter the shifting burdens between the events as a result of in each a district courtroom case and an IPR, the patent challenger has the burden of proving unpatentability. Dupont v. Synvina at 18. The one related distinction, the courtroom famous, was in the quantum of proof essential to show unpatentability. Thus, an IPR petitioner has the burden of persuasion to show unpatentability by a preponderance of the proof, which burden by no means shifts; nevertheless, the burden of manufacturing can shift with respect to the presentation of proof. Id.
The trio of instances, Dupont v. Synvina, Magnum Oil, and Dynamic Drinkware, thought-about collectively, are useful for one’s understanding of the burden shifting framework in each IPR and district courtroom litigation.
Sanjeev Mahanta, Ph.D., J.D.
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