{"id":1074,"date":"2016-07-25T16:35:35","date_gmt":"2016-07-25T20:35:35","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1074"},"modified":"2016-07-25T16:35:35","modified_gmt":"2016-07-25T20:35:35","slug":"pto-cannot-raise-and-decide-unpatentability-theories-never-presented-by-the-petitioner","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1074","title":{"rendered":"PTO Cannot Raise and Decide Unpatentability Theories Never Presented by the Petitioner"},"content":{"rendered":"

In\u00a0In re Magnum Tools International, Ltd.<\/em>, [2015-1300] (July 25, 2016) the Federal Circuit reverse the PTAB’s determination that the challenged claims\u00a0U.S. Patent No. 8,079,413 were invalid for obviousness.<\/p>\n

The Federal Circuit examined burden of proof, which encompasses both\u00a0a burden of persuasion and\u00a0a burden of production. \u00a0The Federal Circuit said that\u00a0In an inter partes review, the burden of persuasion is\u00a0on the petitioner to prove \u2018unpatentability by a preponderance\u00a0of the evidence,\u2019 35 U.S.C. \u00a7 316(e), and that\u00a0burden never shifts to the patentee.\u201d \u00a0Where, as here, the only question presented is whether\u00a0due consideration of the four Graham factors renders a\u00a0claim or claims obvious, no burden shifts from the patent\u00a0challenger to the patentee. \u00a0This is especially true where\u00a0the only issues to be considered are what the prior art\u00a0discloses, whether there would have been a motivation to\u00a0combine the prior art, and whether that combination\u00a0would render the patented claims obvious. \u00a0The Federal Circuit said that\u00a0the PTO\u2019s\u00a0burden shifting framework is directly at\u00a0odds with its precedent holding that the decision to\u00a0institute and the final written decision are \u201ctwo very\u00a0different analyses,\u201d and each applies a \u201cqualitatively\u00a0different standard.\u201d \u00a0Furthermore, because of the significant
difference between the standards of proof at institution\u00a0and trial during an IPR, it is inappropriate to shift the burden to the patentee\u00a0after institution to prove that the patent is patentable.<\/p>\n

The Federal Circuit said\u00a0the petitioner continues to bear the burden of
proving unpatentability after institution, and must do so\u00a0by a preponderance of the evidence at trial. See 35 U.S.C.\u00a0\u00a7 316(e). The Board has an obligation to assess the\u00a0question anew after trial based on the totality of the\u00a0record.<\/p>\n

The patent owner argued that petitioner failed to establish a motivation to combine, pointing out that the Petition was based on a different reference than relied upon in the institution decision. \u00a0The Federal Circuit rejected the PTO’s position that this should have been challenged with a request for rehearing of the institution decision, holding that the patent owner can challenge\u00a0a final Board opinion\u00a0relying on the same rationale given in the institution\u00a0decision.<\/p>\n

The Federal Circuit agreed with the patent owner that\u00a0the Board improperly shifted\u00a0the burden to the patent owner to prove nonobviousness. \u00a0To satisfy its burden of proving obviousness, a petitioner\u00a0cannot employ mere conclusory statements. The\u00a0petitioner must instead articulate specific reasoning,\u00a0based on evidence of record, to support the legal conclusion\u00a0of obviousness.<\/p>\n

Finding that the petitioner\u00a0failed to separately meet its\u00a0burden of establishing obviousness, the Federal Circuit reversed.<\/p>\n

The Federal Circuit went on to reject the USPTO’s position that\u00a0the Board is free to adopt arguments on behalf of\u00a0petitioners that could have been, but were not, raised by\u00a0the petitioner during an IPR. Instead, the Board must\u00a0base its decision on arguments that were advanced by a\u00a0party, and to which the opposing party was given a\u00a0chance to respond. \u00a0The Federal Circuit said that while the PTO has broad authority to establish procedures\u00a0for revisiting earlier-granted patents in IPRs, that\u00a0authority is not so broad that it allows the PTO to raise,\u00a0address, and decide unpatentability theories never presented\u00a0by the petitioner and not supported by record\u00a0evidence.<\/p>\n

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In\u00a0In re Magnum Tools International, Ltd., [2015-1300] (July 25, 2016) the Federal Circuit reverse the PTAB’s determination that the challenged claims\u00a0U.S. Patent No. 8,079,413 were invalid for obviousness. The Federal Circuit examined burden of proof, which encompasses both\u00a0a burden of … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26,12,1],"tags":[],"class_list":["post-1074","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review","category-obviousness","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1074","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1074"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1074\/revisions"}],"predecessor-version":[{"id":1076,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1074\/revisions\/1076"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1074"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1074"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1074"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}