Posts Tagged: "Dynamic Drinkware v. National Graphics"

Takeaways from PTAB’s Precedential Decision on Prior Art Analysis for Post-AIA Patents

In March 2023, the Patent Trial and Appeal Board (Board) addressed in Penumbra, Inc. v. Rapidpulse, Inc.,  IPR2021-01466, Paper 34 (Mar. 10, 2023), a key issue in inter partes reviews: how to establish a reference patent as prior art based on the filing date of an earlier-filed application, such as a provisional. The Board held that the requirements of the Federal Circuit’s decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), do not apply for post-America Invents Act (AIA) patents. Penumbra, IPR2021-01466, Paper 34 at 29-35. On November 15, 2023, U.S Patent and Trademark Office (USPTO) Director Kathi Vidal designated the Penumbra decision precedential. This article explores the evolution of the law on this issue.

To Shift or Not to Shift: Burden Shifting Framework and the PTAB

Earlier this year, in E. I. du Pont de Nemours & Co. v. Synvina C.V. (Fed. Cir. 2018) (“Dupont v. Synvina”), the Federal Circuit found that the Patent Trial and Appeals Board (“the Board”) had erred in holding that in an inter partes review (IPR), the burden to produce evidence of patentability did not shift to the patentee.  Interestingly, in each of the previous two years the court also had occasion to address burden shifting in IPRs.  In In re Magnum Oil Tools International, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (“Magnum Oil”), the Board was found to have been wrong in deeming that when it institutes an IPR – which requires concluding that the petitioner has met the “reasonable likelihood of success” standard – that conclusion operated to shift the burden of producing evidence of patentability to the patentee.  Also, in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (“Aqua Products”), the court considered whether a patentee could amend claims during an IPR only if it accepted the burden of proving that the substitute claims were patentable… The trio of cases, Dupont v. Synvina, Magnum Oil, and Dynamic Drinkware, considered together, are helpful for one’s understanding of the burden shifting framework in both IPR and district court litigation.