Matthew Benner

One of the first rules of patent litigation is that the patentee has the burden of proving infringement. Except that’s not always the case. For over three decades, 35 U.S.C. § 295 has allowed a process patentee to flip that burden and require the alleged infringer to disprove infringement—an exception the Federal Circuit once described as a “potent weapon to use against a non-cooperative defendant.” Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Int’l Trade Comm’n, 224 F.3d 1356, 1360 (Fed. Cir. 2000). But this potent weapon is rarely invoked, and even more rarely applied. The Citing References for Section 295 on Westlaw include just 47 decisions. One reason for the dearth of authorities is that the requirements for Section 295 burden shifting can’t be casually established. But they aren’t impossible to meet, either. And it’s worth taking another look at how this powerful tool works, when it can be used, and how to meet the statute’s requirements.