Who Bears the Burden?

On 25 July 2016, the US Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools Intl that, in the context of inter partes reviews (IPRs), the burden of proof to show unpatentability does not shift to a patent owner following the Patent Trial and Appeal Board’s (PTAB’s) institution decision. The Federal Circuit effectively rejected the US Patent and Trademark Office’s (USPTO’s) argument that PTAB proceedings should follow the same burden-shifting framework as patent prosecution. For practitioners, the USPTO’s position raises some questions: 

Has the PTAB – especially members with a background in examination, ex parte appeals, or inter partes reexamination (IPRex) – been effectively shifting the burden to patent owners following institution?

Will the PTAB behave any differently given the clear and binding holding that petitioners bear the burden from start to finish?

This article explores this topic.

Originally published in Intellectual Property Magazine, www.intellectualpropertymagazine.com