Who Bears the Burden?

Will the PTAB heed the Federal Circuit’s holding that the petitioner always bears the burden of proof?

November 2016

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

The articles on our website include some of the publications and papers authored by our attorneys, both before and after they joined our firm. The content of these articles should not be taken as legal advice. The views and opinions expressed in this article are those of the author(s) and do not necessarily reflect the views or official position of Robins Kaplan LLP.


Cyrus A. Morton


Chair, Patent Office Trials Group

Shui Li

Ryan M. Schultz

Prior Partner

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