CAFC explicates evidentiary burdens when patent challenger relies on the disclosure of a provisional patent application
From Dynamic Drinkware v. National Graphics, 2015-1214
Dynamic argues that the Board erred in shifting the
burden to Dynamic to prove that the Raymond patent was
entitled to the filing date of its provisional application.
According to Dynamic, as a presumptively valid prior art
patent, Raymond’s presumed effective date is its February
15, 2000 provisional application filing date. Dynamic
contends that it made a prima facie showing that Raymond
was thus prior art to the ’196 patent under § 102(e)
as of its provisional date, and, under Giacomini, the
burden should have shifted to National Graphics to prove
that Raymond was not entitled to the filing date of its
provisional application.
In response, National Graphics argues that the Board
properly placed the burden of proof on Dynamic to support
its contention that the Raymond provisional application
provided written description support for the claims of
the Raymond patent. According to National Graphics,
priority claims are not examined by the PTO as a matter
of course, and consequently are not entitled to a presumption
of adequate written description support in the provisional
application.
We agree with National Graphics that the Board did
not err in placing the burden on Dynamic, the petitioner
in the inter partes review, to prove that the prior art
Raymond patent was entitled to the filing date of its
provisional application. As an initial matter, and to
clarify the relative burdens, we begin with the established
concept that there are two distinct burdens of proof: a
burden of persuasion and a burden of production. See
Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
1326–27 (Fed. Cir. 2008). The burden of persuasion “is
the ultimate burden assigned to a party who must prove
something to a specified degree of certainty,” such as by a
preponderance of the evidence or by clear and convincing
evidence. Id. (citations omitted). In an inter partes
review, the burden of persuasion is on the petitioner to
prove “unpatentability by a preponderance of the evidence,”
35 U.S.C. § 316(e), and that burden never shifts to
the patentee. “Failure to prove the matter as required by
the applicable standard means that the party with the
burden of persuasion loses on that point—thus, if the fact
trier of the issue is left uncertain, the party with the
burden loses.” Tech. Licensing, 545 F.3d at 1327.
A second and distinct burden, the burden of production,
or the burden of going forward with evidence, is a
shifting burden, “the allocation of which depends on
where in the process of trial the issue arises.” Id. (citations
omitted). The burden of production may entail
“producing additional evidence and presenting persuasive
argument based on new evidence or evidence already of
record.” Id.
These burdens are illustrated in Technology Licensing,
where the patentee, TLC, sued Gennum for infringement,
and Gennum argued that TLC’s patent was
anticipated by certain prior art. Id. At issue was whether
the asserted patent was entitled to the benefit of the
priority date of a related nonprovisional application. Id.
TLC argued that the asserted claim was entitled under 35
U.S.C. § 120 to the benefit of the earlier filing date of its
parent nonprovisional application. Id. Section 120, which
has language similar to that found in § 119(e)(1), provides
that a patent application for an “invention disclosed in the
manner provided by the first paragraph of section 112 of
this title in an application previously filed in the United
States . . . shall have the same effect, as to such invention,
as though filed on the date of the prior application . . . .”
(emphasis added).
Gennum, having the ultimate burden of proving its
defense of invalidity based on anticipating prior art, also
had the initial “burden of going forward with evidence
that there is such anticipating prior art.” Tech. Licensing,
545 F.3d at 1327. In response, TLC then had “the burden
of going forward with evidence either that the prior art
does not actually anticipate, or, as [TLC] attempted in
this case, that it is not prior art because the asserted
claim is entitled to the benefit of a filing date prior to the
alleged prior art.” Id. We noted that “[t]his requires TLC
to show not only the existence of the earlier application,
but why the written description in the earlier application
supports the claim.” Id. We concluded that once “TLC’s
evidence and argument in support of the earlier filing
date is . . . before the court, the burden of going forward
again shifts to the proponent of the invalidity defense,
Gennum, to convince the court that TLC is not entitled to
the benefit of the earlier filing date.” Id. at 1328.
The aforementioned shifting burdens and related priority
claims under § 120 in district court litigation parallel
the shifting burdens and related priority claims under
§ 119(e)(1) in inter partes reviews. Although, as Dynamic
notes, the patent in Technology Licensing was entitled to
the presumption of validity under 35 U.S.C. § 282, the
different evidentiary standard in an inter partes review
does not alter the shifting burdens between the parties
because § 316(e) also places the burden of persuasion on
the petitioner to prove unpatentability. Compare § 282
(“The burden of establishing invalidity of a patent or any
claim thereof shall rest on the party asserting such invalidity.”),
with § 316(e) (“In an inter partes review . . . , the
petitioner shall have the burden of proving a proposition
of unpatentability by a preponderance of the evidence.”)
In the present case
In this case, Dynamic, as the petitioner, had the burden
of persuasion to prove unpatentability by a preponderance
of the evidence, and this burden never shifted.
Dynamic also had the initial burden of production, and it
satisfied that burden by arguing that Raymond anticipated
the asserted claims of the ’196 patent under
§ 102(e)(2).
The burden of production then shifted to National
Graphics to argue or produce evidence that either Raymond
does not actually anticipate, or, as was argued in
this case, that Raymond is not prior art because the
asserted claims in the ’196 patent are entitled to the
benefit of a filing date (constructive or otherwise) prior to
the filing date of Raymond. National Graphics produced
evidence that the invention claimed in the ’196 patent
was reduced to practice prior to the filing date of Raymond,
and thus contended that the asserted claims were
entitled to a date of invention prior to that of the Raymond
patent.
As a result, the burden of production returned to Dynamic
to prove that either the invention was not actually
reduced to practice as argued, or that the Raymond prior
art was entitled to the benefit of a filing date prior to the
date of National Graphics’ reduction to practice. As the
Board found, however, Dynamic failed to carry its burden
of proving that Raymond’s effective date was earlier than
the date that the invention claimed in the ’196 patent was
reduced to practice. The burden of production was on
Dynamic to prove that, under § 119(e)(1), Raymond was
entitled to the benefit of the filing date of its provisional
application, and it failed to do that.
The reasoning of the CAFC:
In contrast, Dynamic’s proffered approach would create
a presumption that a patent is entitled to the benefit
of the filing date of its provisional precursor, but that
would be unsound because the PTO does not examine
provisional applications as a matter of course; such a
presumption is therefore not justified. The PTO’s Manual
of Patent Examining Procedure (“MPEP”), which is
“commonly relied upon as a guide to patent attorneys and
patent examiners on procedural matters,” Litton Sys., Inc.
v. Whirlpool Corp., 728 F.2d 1423, 1439 (Fed. Cir. 1984),
explains this:
If the filing date of the earlier provisional application
is necessary, for example, in the case of an interference
or to overcome a reference, care must be
taken to ensure that the disclosure filed as the
provisional application adequately provides (1) a
written description of the subject matter of the
claim(s) at issue in the later filed nonprovisional
application, and (2) an enabling disclosure to
permit one of ordinary skill in the art to make and
use the claimed invention in the later filed
nonprovisional application without undue experimentation.
MPEP § 211.05(I)(A) (2014) (emphasis added). Thus,
because the PTO does not examine priority claims unless
necessary, the Board has no basis to presume that a
reference patent is necessarily entitled to the filing date of
its provisional application. See, e.g., PowerOasis, Inc. v.
T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008)
(“When neither the PTO nor the Board has previously
considered priority, there is simply no reason to presume
that claims in a [continuation-in-part] application are
entitled to the effective filing date of an earlier filed
application. Since the PTO did not make a determination
regarding priority, there is no finding for the district court
to defer to.”).
Indeed, Dynamic’s reliance on Giacomini to argue for
a presumption is misplaced.
link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1214.Opinion.9-2-2015.1.PDF
An issue here is "what" must be compared for the prior art patent to have the
priority date of the provisional. The CAFC seemed to indicate the disclosure of the
provisional must support the later claims of the related patent:
We ultimately agree with National Graphics, however,
that the Board’s decision was supported by substantial
evidence because Dynamic failed to compare the claims of
the Raymond patent to the disclosure in the Raymond
provisional application. A reference patent is only entitled
to claim the benefit of the filing date of its provisional
application if the disclosure of the provisional application
provides support for the claims in the reference patent in
compliance with § 112, ¶ 1. In re Wertheim, 646 F.2d 527,
537 (CCPA 1981).2 As Dynamic acknowledges, it provided
charts to the Board comparing the claims of the ’196
patent to the disclosure of the Raymond patent and claim
1 of the ’196 patent to the disclosure of the Raymond
provisional application. See, e.g., Appellant’s Br. at 22.
Nowhere, however, does Dynamic demonstrate support in
the Raymond provisional application for the claims of the
Raymond patent. That was Dynamic’s burden. A provisional
application’s effectiveness as prior art depends on
its written description support for the claims of the issued
patent of which it was a provisional. Dynamic did not
make that showing.
Is the priority issue "all or none" or "claim by claim"?
Wertheim notes:
We emphasize that the above noted statutes, §§ 102(e), 120, and 112, speak with reference to some specific claimed subject matter by use of the terms emphasized. It is axiomatic in patent law that questions of description, disclosure, enablement, anticipation, and obviousness can only be discussed with reference to a specific claim which identifies "the invention" referred to in the statutes.
Thus, the determinative question here is whether the invention claimed in the Pfluger patent finds a supporting disclosure in compliance with § 112, as required by § 120, in the 1961 Pfluger I application so as to entitle that invention in the Pfluger patent, as "prior art," to the filing date of Pfluger I. Without such support, the invention, and its accompanying disclosure, cannot be regarded as prior art as of that filing date.
(...)
To look at it another way, without the benefit of the Pfluger I filing date, that part of the reference patent disclosure relied upon cannot be said to have been incipient public knowledge as of that date "but for" the delays of the Patent and Trademark Office, under the Milburn rationale. Here, it cannot be said to have been "carried over" into the reference patent for purposes of defeating another's application for patent under §§ 102(e)/103.
The dictum in Lund,[4] supra, that
* * * the continuation-in-part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application * * * for purposes of * * * utilizing the patent disclosure as evidence to defeat another's right to a patent * * * [emphasis in original]
is hereby modified to further include the requirement that the application, the filing date of which is needed to make a rejection, must disclose, pursuant to §§ 120/112, the invention claimed in the reference patent. Where continuation-in-part applications are involved, the logic of the Milburn holding as to secret prior art would otherwise be inapplicable. Without the presence of a patentable invention, no patent could issue "but for the delays of" the PTO.
Cross-reference to two posts on PatentlyO
**
Ex parte Yamaguchi (BPAI 2008)(Precedential Opinion)
In prosecution, the Examiner cited the Narayanan reference against a Texas Instruments patent application filed by Yamaguchi. The rejection identified Narayanan as prior art under 35 U.S.C. § 102(e). The issue on appeal to the BPAI was whether the Narayanan reference can be considered 102(e) prior art as of the filing date of its provisional application.
Section 102(e) allows for submarine prior art – these are typically pending US patent applications that, when published or patented, suddenly become prior art as of their filing date. The statute allows that “[a] person shall be entitled to a patent unless . . .the invention was described in . . .a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.. . .” 35 U.S.C. § 102(e).
102(e) Provisional: The issue here is whether Narayanan’s provisional application can be used in 102(e) analysis. The expanded BPAI panel agreed with the examiner that the 102(e) prior art date does reach-back to the date of provisional filing. This result is based on their analysis of 35 U.S.C. § 111(b). Section 111(b) requires that “provisions of this title relating to applications for patent shall apply to provisional applications for patent.”
**
AND
Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result
Dynamic argues that the Board erred in shifting the
burden to Dynamic to prove that the Raymond patent was
entitled to the filing date of its provisional application.
According to Dynamic, as a presumptively valid prior art
patent, Raymond’s presumed effective date is its February
15, 2000 provisional application filing date. Dynamic
contends that it made a prima facie showing that Raymond
was thus prior art to the ’196 patent under § 102(e)
as of its provisional date, and, under Giacomini, the
burden should have shifted to National Graphics to prove
that Raymond was not entitled to the filing date of its
provisional application.
In response, National Graphics argues that the Board
properly placed the burden of proof on Dynamic to support
its contention that the Raymond provisional application
provided written description support for the claims of
the Raymond patent. According to National Graphics,
priority claims are not examined by the PTO as a matter
of course, and consequently are not entitled to a presumption
of adequate written description support in the provisional
application.
We agree with National Graphics that the Board did
not err in placing the burden on Dynamic, the petitioner
in the inter partes review, to prove that the prior art
Raymond patent was entitled to the filing date of its
provisional application. As an initial matter, and to
clarify the relative burdens, we begin with the established
concept that there are two distinct burdens of proof: a
burden of persuasion and a burden of production. See
Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
1326–27 (Fed. Cir. 2008). The burden of persuasion “is
the ultimate burden assigned to a party who must prove
something to a specified degree of certainty,” such as by a
preponderance of the evidence or by clear and convincing
evidence. Id. (citations omitted). In an inter partes
review, the burden of persuasion is on the petitioner to
prove “unpatentability by a preponderance of the evidence,”
35 U.S.C. § 316(e), and that burden never shifts to
the patentee. “Failure to prove the matter as required by
the applicable standard means that the party with the
burden of persuasion loses on that point—thus, if the fact
trier of the issue is left uncertain, the party with the
burden loses.” Tech. Licensing, 545 F.3d at 1327.
A second and distinct burden, the burden of production,
or the burden of going forward with evidence, is a
shifting burden, “the allocation of which depends on
where in the process of trial the issue arises.” Id. (citations
omitted). The burden of production may entail
“producing additional evidence and presenting persuasive
argument based on new evidence or evidence already of
record.” Id.
These burdens are illustrated in Technology Licensing,
where the patentee, TLC, sued Gennum for infringement,
and Gennum argued that TLC’s patent was
anticipated by certain prior art. Id. At issue was whether
the asserted patent was entitled to the benefit of the
priority date of a related nonprovisional application. Id.
TLC argued that the asserted claim was entitled under 35
U.S.C. § 120 to the benefit of the earlier filing date of its
parent nonprovisional application. Id. Section 120, which
has language similar to that found in § 119(e)(1), provides
that a patent application for an “invention disclosed in the
manner provided by the first paragraph of section 112 of
this title in an application previously filed in the United
States . . . shall have the same effect, as to such invention,
as though filed on the date of the prior application . . . .”
(emphasis added).
Gennum, having the ultimate burden of proving its
defense of invalidity based on anticipating prior art, also
had the initial “burden of going forward with evidence
that there is such anticipating prior art.” Tech. Licensing,
545 F.3d at 1327. In response, TLC then had “the burden
of going forward with evidence either that the prior art
does not actually anticipate, or, as [TLC] attempted in
this case, that it is not prior art because the asserted
claim is entitled to the benefit of a filing date prior to the
alleged prior art.” Id. We noted that “[t]his requires TLC
to show not only the existence of the earlier application,
but why the written description in the earlier application
supports the claim.” Id. We concluded that once “TLC’s
evidence and argument in support of the earlier filing
date is . . . before the court, the burden of going forward
again shifts to the proponent of the invalidity defense,
Gennum, to convince the court that TLC is not entitled to
the benefit of the earlier filing date.” Id. at 1328.
The aforementioned shifting burdens and related priority
claims under § 120 in district court litigation parallel
the shifting burdens and related priority claims under
§ 119(e)(1) in inter partes reviews. Although, as Dynamic
notes, the patent in Technology Licensing was entitled to
the presumption of validity under 35 U.S.C. § 282, the
different evidentiary standard in an inter partes review
does not alter the shifting burdens between the parties
because § 316(e) also places the burden of persuasion on
the petitioner to prove unpatentability. Compare § 282
(“The burden of establishing invalidity of a patent or any
claim thereof shall rest on the party asserting such invalidity.”),
with § 316(e) (“In an inter partes review . . . , the
petitioner shall have the burden of proving a proposition
of unpatentability by a preponderance of the evidence.”)
In the present case
In this case, Dynamic, as the petitioner, had the burden
of persuasion to prove unpatentability by a preponderance
of the evidence, and this burden never shifted.
Dynamic also had the initial burden of production, and it
satisfied that burden by arguing that Raymond anticipated
the asserted claims of the ’196 patent under
§ 102(e)(2).
The burden of production then shifted to National
Graphics to argue or produce evidence that either Raymond
does not actually anticipate, or, as was argued in
this case, that Raymond is not prior art because the
asserted claims in the ’196 patent are entitled to the
benefit of a filing date (constructive or otherwise) prior to
the filing date of Raymond. National Graphics produced
evidence that the invention claimed in the ’196 patent
was reduced to practice prior to the filing date of Raymond,
and thus contended that the asserted claims were
entitled to a date of invention prior to that of the Raymond
patent.
As a result, the burden of production returned to Dynamic
to prove that either the invention was not actually
reduced to practice as argued, or that the Raymond prior
art was entitled to the benefit of a filing date prior to the
date of National Graphics’ reduction to practice. As the
Board found, however, Dynamic failed to carry its burden
of proving that Raymond’s effective date was earlier than
the date that the invention claimed in the ’196 patent was
reduced to practice. The burden of production was on
Dynamic to prove that, under § 119(e)(1), Raymond was
entitled to the benefit of the filing date of its provisional
application, and it failed to do that.
The reasoning of the CAFC:
In contrast, Dynamic’s proffered approach would create
a presumption that a patent is entitled to the benefit
of the filing date of its provisional precursor, but that
would be unsound because the PTO does not examine
provisional applications as a matter of course; such a
presumption is therefore not justified. The PTO’s Manual
of Patent Examining Procedure (“MPEP”), which is
“commonly relied upon as a guide to patent attorneys and
patent examiners on procedural matters,” Litton Sys., Inc.
v. Whirlpool Corp., 728 F.2d 1423, 1439 (Fed. Cir. 1984),
explains this:
If the filing date of the earlier provisional application
is necessary, for example, in the case of an interference
or to overcome a reference, care must be
taken to ensure that the disclosure filed as the
provisional application adequately provides (1) a
written description of the subject matter of the
claim(s) at issue in the later filed nonprovisional
application, and (2) an enabling disclosure to
permit one of ordinary skill in the art to make and
use the claimed invention in the later filed
nonprovisional application without undue experimentation.
MPEP § 211.05(I)(A) (2014) (emphasis added). Thus,
because the PTO does not examine priority claims unless
necessary, the Board has no basis to presume that a
reference patent is necessarily entitled to the filing date of
its provisional application. See, e.g., PowerOasis, Inc. v.
T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008)
(“When neither the PTO nor the Board has previously
considered priority, there is simply no reason to presume
that claims in a [continuation-in-part] application are
entitled to the effective filing date of an earlier filed
application. Since the PTO did not make a determination
regarding priority, there is no finding for the district court
to defer to.”).
Indeed, Dynamic’s reliance on Giacomini to argue for
a presumption is misplaced.
link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1214.Opinion.9-2-2015.1.PDF
An issue here is "what" must be compared for the prior art patent to have the
priority date of the provisional. The CAFC seemed to indicate the disclosure of the
provisional must support the later claims of the related patent:
We ultimately agree with National Graphics, however,
that the Board’s decision was supported by substantial
evidence because Dynamic failed to compare the claims of
the Raymond patent to the disclosure in the Raymond
provisional application. A reference patent is only entitled
to claim the benefit of the filing date of its provisional
application if the disclosure of the provisional application
provides support for the claims in the reference patent in
compliance with § 112, ¶ 1. In re Wertheim, 646 F.2d 527,
537 (CCPA 1981).2 As Dynamic acknowledges, it provided
charts to the Board comparing the claims of the ’196
patent to the disclosure of the Raymond patent and claim
1 of the ’196 patent to the disclosure of the Raymond
provisional application. See, e.g., Appellant’s Br. at 22.
Nowhere, however, does Dynamic demonstrate support in
the Raymond provisional application for the claims of the
Raymond patent. That was Dynamic’s burden. A provisional
application’s effectiveness as prior art depends on
its written description support for the claims of the issued
patent of which it was a provisional. Dynamic did not
make that showing.
Is the priority issue "all or none" or "claim by claim"?
Wertheim notes:
We emphasize that the above noted statutes, §§ 102(e), 120, and 112, speak with reference to some specific claimed subject matter by use of the terms emphasized. It is axiomatic in patent law that questions of description, disclosure, enablement, anticipation, and obviousness can only be discussed with reference to a specific claim which identifies "the invention" referred to in the statutes.
Thus, the determinative question here is whether the invention claimed in the Pfluger patent finds a supporting disclosure in compliance with § 112, as required by § 120, in the 1961 Pfluger I application so as to entitle that invention in the Pfluger patent, as "prior art," to the filing date of Pfluger I. Without such support, the invention, and its accompanying disclosure, cannot be regarded as prior art as of that filing date.
(...)
To look at it another way, without the benefit of the Pfluger I filing date, that part of the reference patent disclosure relied upon cannot be said to have been incipient public knowledge as of that date "but for" the delays of the Patent and Trademark Office, under the Milburn rationale. Here, it cannot be said to have been "carried over" into the reference patent for purposes of defeating another's application for patent under §§ 102(e)/103.
The dictum in Lund,[4] supra, that
* * * the continuation-in-part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application * * * for purposes of * * * utilizing the patent disclosure as evidence to defeat another's right to a patent * * * [emphasis in original]
is hereby modified to further include the requirement that the application, the filing date of which is needed to make a rejection, must disclose, pursuant to §§ 120/112, the invention claimed in the reference patent. Where continuation-in-part applications are involved, the logic of the Milburn holding as to secret prior art would otherwise be inapplicable. Without the presence of a patentable invention, no patent could issue "but for the delays of" the PTO.
Cross-reference to two posts on PatentlyO
**
Ex parte Yamaguchi (BPAI 2008)(Precedential Opinion)
In prosecution, the Examiner cited the Narayanan reference against a Texas Instruments patent application filed by Yamaguchi. The rejection identified Narayanan as prior art under 35 U.S.C. § 102(e). The issue on appeal to the BPAI was whether the Narayanan reference can be considered 102(e) prior art as of the filing date of its provisional application.
Section 102(e) allows for submarine prior art – these are typically pending US patent applications that, when published or patented, suddenly become prior art as of their filing date. The statute allows that “[a] person shall be entitled to a patent unless . . .the invention was described in . . .a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.. . .” 35 U.S.C. § 102(e).
102(e) Provisional: The issue here is whether Narayanan’s provisional application can be used in 102(e) analysis. The expanded BPAI panel agreed with the examiner that the 102(e) prior art date does reach-back to the date of provisional filing. This result is based on their analysis of 35 U.S.C. § 111(b). Section 111(b) requires that “provisions of this title relating to applications for patent shall apply to provisional applications for patent.”
**
AND
Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result
posted by Lawrence B. Ebert at 3:26 PM
0 Comments:
Post a Comment
<< Home