September 21, 2018Newsletter

This Week at the Board - September 21, 2018

Federal Circuit Holds That Patent Owner Bears Burden Of Production In IPR When Prior Art Shows Overlapping Range 

In E.I. du Pont de Nemours & Company et al. v. Synvina C.V., the Fed. Circuit reversed a final written decision.  The Federal Circuit noted that while a petitioner generally carries the burden of showing that a patent is invalid in an IPR, there may be occasion where the patent owner carries a production burden.  In particular, when there is a range disclosed in the prior art and the claimed invention falls within the range (i.e., an “overlapping range”), the burden of production falls upon the patent owner to come forward with evidence of teaching away, unexpected results, or other pertinent evidence.  The Federal Circuit noted that this was the first instance it had been asked whether the overlapping range burden-shifting applies in an IPR.  While previous cases had addressed other types of burden-shifting (e.g., burden of persuasion), no case had yet specifically addressed the overlapping range burden-shifting in an IPR.    

A link to the decision is found here.


Federal Circuit Holds That Catalog Was Publicly Accessible 

In Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit held that a catalog from an inventor’s company was publicly accessible, and thus prior art.  The parties disputed whether the catalog should qualify as a printed publication under pre-AIA §102(b).  The Federal Circuit agreed with Instradent, however, that substantial evidence supported the Board’s finding that the catalog was accessible.  Specifically, there was testimony evidence that a copy of the catalog was obtained during a 2003 conference by an individual visiting the conference.  Additionally, the catalog had a 2003 date on its front cover, supporting the finding that the catalog was publicly accessible at the 2003 conference.  Additionally, there was evidence that the catalog was the type of document normally intended for public dissemination.         

A link to the decision is found here.


Federal Circuit Remands IPRs Back To Board To Address Real Party In Interest Evidence 

In Worlds Inc. v. Bungie, Inc.,  the Federal Circuit remanded IPRs back to the Board to determine whether the IPR petitions were time-barred because a real part in interest was served with a complaint more than one year prior to the filings.  When Bungie filed its petitions, it listed itself as the only petitioner.  Worlds, however, presented evidence of another real party in interest, so as to put the issue in dispute.  However, the Board failed to make factual determinations necessary to evaluate whether Bungie had satisfied its burden to demonstrate that its petitions were not time-barred.  The Federal Circuit noted that the burden remains on the petitioner, not the patent owner, in such situations.  The Federal Circuit noted that the Board never fully addressed whether Bungie had satisfied its burden, and instead appeared to rely on attorney arguments rather than actual evidence in finding that the petitions were not time-barred.        

A link to the decision is found here.

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