- Affirmative Recovery
- American Indian Law and Policy
- Antitrust and Trade Regulation
- Appellate Advocacy and Guidance
- Business Litigation
- Civil Rights and Police Misconduct
- Class Action Litigation
- Commercial/Project Finance and Real Estate
- Corporate Governance and Special Situations
- Corporate Restructuring and Bankruptcy
- Domestic and International Arbitration
- Ediscovery
- Health Care Litigation
- Insurance and Catastrophic Loss
- Intellectual Property and Technology Litigation
- Litigation Support Services
- Mass Tort Attorneys
- Medical Malpractice Attorneys
- Personal Injury Attorneys
- Telecommunications Litigation and Arbitration
- Wealth Planning, Administration, and Disputes
-
January 15, 2021Robins Kaplan Partners Named to IAM Strategy 300 Global Leaders Guide
-
January 12, 20212025 Goals - Our commitment to Inclusion, Diversity, and Equity
-
January 5, 2021Litigator Mark Hallberg Joins Robins Kaplan LLP
-
January 28, 2021COVID-19: The Show Did Not Go On
-
February 9, 2021Smart Phone Privacy and Data Security – How to Assess and Minimize Risk in the Current Reality
-
March 6, 2021With Our Voices 2021 Arc Gala
-
December 27, 2020Covid-19 Relief Bill Provides Long-Awaited Funding to Small Businesses and Individuals
-
December 17. 2020Covid-19 Divorce and Marital Property Agreements
-
Fall 2020COVID Immunity: No, Not That Kind of Immunity
-
January 22, 2021Financial Daily Dose 1.22.2021 | Top Story: Google Threatens to Pull Search From Down Under Over Proposed Law
-
January 21, 2021Financial Daily Dose 1.21.2021 | Top Story: Wall Street Greets Biden Administration With Rally, Records on Stimulus Hopes
-
January 20, 2021Financial Daily Dose 1.20.2021 | Top Story: Netflix Hits 200M Subscribers, Halts Massive Borrowing
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.
Related Professionals
Related Publications
Related News
If you are interested in having us represent you, you should call us so we can determine whether the matter is one for which we are willing or able to accept professional responsibility. We will not make this determination by e-mail communication. The telephone numbers and addresses for our offices are listed on this page. We reserve the right to decline any representation. We may be required to decline representation if it would create a conflict of interest with our other clients.
By accepting these terms, you are confirming that you have read and understood this important notice.