Posts Tagged: "LLC v. Matal"

Petitioner Must Prove Unpatentability of Patentee’s Substitute Claims in an IPR

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.

Joseph Robinson & Robert Schaffer

January 5, 2018

Federal Circuit applies ‘rule of reason’ to find inventor testimony credible in IPR

The Court found the Board’s reliance on Woodland Trust to be “misplaced” because in that case there had been continued public use for a period of a decade without any documentary evidence to support conception. To the contrary, on the facts presented here there was some documentation over the period of several months. Furthermore, that documentation took place nearly twenty years ago, which according to the Court wrote made this situation far closer to Loral Fairchild Corp. v. Matsushita Electric, 266 F.3d 1358 (Fed. Cir. 2001). In Loral Fairchild the Court previously “forgave the inventor’s inability ‘to submit documents showing production test results, considering that the events at issue occurred almost 30 years ago’” — when the inventor’s account was otherwise adequately corroborated. Additionally, there was no one else suggested by either party as the actual inventor.

Joseph Robinson & Robert Schaffer & Gene Quinn

September 29, 2017