Posts Tagged: "burden of persuasion"

After the case was filed in the Eastern District of Texas, ZTE filed a motion to transfer the case to the Northern District of Texas under 28 U.S.C. § 1404(a) and filed a motion to dismiss for improper venue under 28 U.S.C. § 1406 and § 1400(b). The district court ruled that the Eastern District of Texas was a proper venue. Relying on Fifth Circuit law, the district court denied ZTE’s motion to dismiss, finding that ZTE “failed to meet its burden to show that it does not have a regular and established place of business in the District.” ZTE filed a petition for a writ of mandamus alleging that the district court improperly placed the burden of proof on the defendant.

Due to the recent decision in Aqua Products v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the Court disagreed with the Board’s decision to deny Bosch’s motion to amend. The Board noted in its final decision that it was “unpersuaded that Bosch had demonstrated that the proposed substitute claims are patentable.” However, under Aqua Products, the patent owner does not bear the burden of proof for the patentability of its proposed amended claims in an IPR proceeding. Rather, the petitioner must prove by a preponderance of the evidence that the proposed amended claims are unpatentable. The Board therefore impermissibly assigned the burden of proof to Bosch.

It is that time once again when we look back on the previous year in preparation to close the final chapter of 2017 in order move fresh into the year ahead. 2017 was a busy year in the patent world, although change was not as cataclysmic as it had been in past years, such as 2012 when the PTAB and post grant challenges began, in 2013 when AIA first to file rules went into effect, or in 2014 when the Supreme Court decided Alice v. CLS Bank. It was, nevertheless, still an interesting year… To come up with the list below I’ve reviewed all of our patent articles, and have come up with these top 10 patent stories for 2017. They appear in chronological order as they happened throughout the year.

On November 21, 2017, the USPTO’s Chief Administrative Patent Judge David P. Ruschke issued a memorandum to the Patent Trial and Appeal Board (PTAB) providing guidance on motions to amend claims during trial proceedings before the PTAB. This was done in light of the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) on October 4, 2017… Judge Ruschke has reversed the PTAB’s practice of placing the burden of persuasion on the patent owner rather than the inter partes review (IPR) petitioner: “In light of the Aqua Products decision, the Board will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend,” the Ruschke memo reads.

First-take reaction to Aqua Products v. Matal from a distinguished panel of experts. Todd Dickinson: “I don’t think that I’ve ever seen such a collection of procedural somersaults and arcane discussion masquerading as an appellate opinion. ” Russell Slifer: “it would be wise for the USPTO and the PTAB to consider limiting all Board decisions wholly to the record developed during the proceeding. Eliminate the opportunity for a panel to issue a sua sponte reason for unpatentability.” Ashley Keller: “One could be forgiven for wondering if the Republic is truly well served entrusting such a tribunal with exclusive jurisdiction over patent appeals.” John White: “This decision puts neon highlights around what is wrong with the PTAB process as it pursues the political outcome of ridding the system of ‘troublesome’, aka: ‘commercially valuable’, patents.” Plus much more.