December 9, 2015

Sec. 103(c) Saves Patent Claims in IPR Final Written Decision

In a recently-issued Final Written Decision, the Board thoroughly explained the sometimes tricky issue of the shift, if any, of the burden of proof/production in an IPR proceeding. Global Tel*Link Corp. v. Securus Techs., Inc., IPR2014-00825, Paper 36. The burden issue arose in the interesting context of a patent owner disqualifying certain prior art using 35 USC § 103(c)(1).

The IPR trial in Global Tel*Link was instituted based upon a prior art reference that was co-assigned to the assignee of the patent-at-issue in the IPR (“the ‘357 patent”). Patent Owner argued, therefore, that the prior art was disqualified under § 103(c)(1) because the art and claimed invention was “subject to an obligation of assignment to the same person.”

The Board first addressed the issue of burden of persuasion versus burden of production. In an IPR proceeding, the burden of persuasion is on Petitioner “and that burden never shifts to the Patent Owner.” Op. at 11. 35 USC § 316(e). Regarding the issue of the prior art at issue in the proceeding, Petitioner initially also had the burden of production. In this case, that burden was satisfied by the argument in the Petition that the prior art (under 102(e)) rendered the challenged claims unpatentable.

At this point, the burden of production then shifted to Patent Owner to argue that the art did not qualify as prior art. The Board determined that Patent Owner met this burden by showing that both the prior art and ‘357 patent were owned by the same company at the time the invention was made. The evidence supporting this proposition included assignment records of the ‘357 patent. Patent owner met its burden of production that, at the time of the filing of the application that led to the ‘357 patent, the inventions were co-owned by making a representation that the invention at issue was not constructively reduced to practice until the filing of that application. On this point, the Board concluded that, “absent credible factual support to the contrary, the claimed invention was made on the effective filing date.” Op. at 13-14.

The shifting of the burden of production did not hamper Patent Owner in this case, as a § 103(c)(1) argument to disqualify certain prior art led to the survival of several challenged claims.