The burden of proof does not automatically shift between the petitioner and the patent owner as soon as the PTO institutes an inter partes review. Here, for example, the petitioner’s failure to specifically address a motivation to combine the two prior art references relied upon in the PTO’s decision to institute was found to be insufficient to establish a prima facie case of obviousness even though the PTO, in deciding to institute the inter partes review, necessarily found that the petitioner had demonstrated a reasonable likelihood of success. “Where, as here, the only question presented is whether due consideration of the four Graham factors renders a claim or claims obvious, no burden shifts from the patent challenger to the patentee.” This would be a good case to consult and cite in response to a decision to institute inter partes review based on an incomplete prima facie case.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to technology in the field of oil drilling through use of hydraulic fracturing, commonly known as “fracking.” Despite the PTO deciding to institute the inter partes review, the petitioner had not specifically addressed a motivation to combine the two prior art references relied upon.
Issue(s): Whether the burden of proof nevertheless shifts between the petitioner and the patent owner as soon as the PTO institutes an inter partes review.
Holding(s): No. “Applying a burden-shifting framework here would introduce unnecessary confusion because the ultimate burden of persuasion of obviousness must remain on the patent challenger and ‘a fact finder must consider all evidence of obviousness and nonobviousness before reaching a determination.’ [] Where, as here, the only question presented is whether due consideration of the four Graham factors renders a claim or claims obvious, no burden shifts from the patent challenger to the patentee. This is especially true where the only issues to be considered are what the prior art discloses, whether there would have been a motivation to combine the prior art, and whether that combination would render the patented claims obvious. We thus disagree with the PTO’s position that the burden of production shifts to the patentee upon the Board’s conclusion in an institution decision that ‘there is a reasonable likelihood that the petitioner would prevail.’”