A recent Federal Circuit decision (DuPont v. Synvina) addressed two key issues in PTAB proceedings: burden shifting and standing to appeal.

Burden shifting

Previous decisions, Dynamic Drinkware and Magnum Oil, held that in post-grant proceedings, the burden to show unpatentability lies with the petitioner. But in DuPont the Federal Circuit held that burden shifting is appropriate in IPRs in obviousness arguments involving overlapping ranges.

In the IPR, the challenged claims were directed to a one-step method of preparing 2,5-furandicarboxylic acid (FDCA) — an organic compound that can be made from plant-sugars and then used to make plastic. One-step methods were already in the art, but disclosed different ranges of temperature and pressure than those claimed.

Long-standing Federal Circuit precedent has held that a “prima facie case of obviousness” exists when ranges within the prior art overlap with that of the claimed invention. A patentee may overcome that prima facie case by proving some criticality of the claimed amount or range, typically by providing evidence of unexpected results, for example. But in the underlying IPR proceeding, the PTAB did not apply this burden-shifting approach — rather, the Board cited Dynamic Drinkware and Magnum Oil as prohibiting burden-shifting in IPRs.

On appeal, however, the Federal Circuit held that the traditional obviousness burden-shifting associated with obviousness of overlapping ranges equally applies to IPR proceedings:

While a patentee technically has no “burden” to do anything to defend the validity of its patent other than hold the patent challenger to its own burden of persuasion, that burden of persuasion is necessarily satisfied when there is no evidentiary reason to question the prior art’s disclosure of a claimed range. Magnum Oil is not to the contrary.

Moving forward, Patentees are now on notice that they have the burden to make the case for why the patent is not obvious, when the prior art discloses overlapping ranges.

Standing to appeal

While any person other than the patent owner or inventor can file a petition for an IPR, not every petitioner has the ability to appeal an unfavorable final written decision to the Federal Circuit. Previous decisions (Phygenix and JTEKT Corp, for example) have informed the public about what is not enough to provide standing to appeal, but in DuPont, the Federal Circuit found activity that is enough.

Here, the Federal Circuit held that DuPont had standing because it has “concrete plans” to engage in activity that could give rise to infringement. DuPont had announced plans for a plant that can produce the chemical covered by the patent, and the facility opened while the appeal was pending. The court also noted that the Patent Owner accused DuPont of copying its patented invention during the IPR and refused to grant DuPont a covenant not to sue.

This decision is fact specific, but gives a data point to petitioners who are still in the pre-launch development stage, but are seeking to create more assurances around freedom-to-operate through IPRs.