Petitioner has the burden of proof to show obviousness in an Inter Partes Review. GARMIN v. LOGANTREE

Petitioner has the burden of proof to show obviousness in an Inter Partes Review. GARMIN v. LOGANTREE

After a patent is granted it is not immune from attack. Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.  The inventor and the patent examiner do their best to consider all the relevant prior during the patent application process, but sometimes relevant prior art is overlooked.  If a member of the public discovers a piece of prior art which anticipates a patent which has been granted they may request an inter partes review of the patent.  An inter partes review can result in invalidation of some or all of the claims of a patent.

The burden of proof in an inter partes review is on the person that initiated the review.  An inter partes review will be initiated if the petitioner demonstrates a reasonable likelihood of prevailing in showing anticipation or obviousness.  If inter partes review is granted, the petitioner must prove by a preponderance of the evidence that the claims of the challenged patent are unpatentable.

Obviousness is a question of law based on underlying findings of fact. Those underlying findings of fact include: (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) the presence of evidence of secondary considerations, such “as commercial success, long felt but unsolved needs, failure of others,” and unexpected results.  The Patent Trial and Appeal Board decides whether the petitioner has met this burden.

If the Board’s decision is appealed by either the petitioner or the respondent, the decision of the Board will be reviewed to see if it supported by substantial evidence.  The Court of Appeals for the Federal Circuit hears appeals from the Board and will not substitute its own opinion if the Board’s decision is supported by substantial evidence.  This is common practice in courts, the original court scrutinizes the facts and applies the law.  Appellate courts review the record to see if the evidence is sufficient to support the factual findings and the law was applied correctly, but the facts of the case are not scrutinized again.

GARMIN INTERNATIONAL, INC., v. LOGANTREE, LP, 2020-1108 (C.A.F.C. 2020) demonstrates a case where the petitioner in an inter partes review failed to meet its burden of proof.

U.S. Patent No. 6,059,576 (the ’576 patent) is the subject of this case.  The patent claims a device which monitors a users movement and trains the user to avoid injury.  To accomplish this, the device employs a microprocessor connected to a movement sensor that analyzes and responds to the user’s movement data.

Petitioner claimed that the ‘576 patent was obvious in light of U.S. Patent No. 5,976,083 by Richardson and U.S. Patent No. 5,978,972 by Stewart. The PTAB concluded that the references did not make the  ’576 patent obvious because Richardson did not disclose a microprocessor and Stewart did not explicitly disclose that the microprocessor interpreted movement data.  Petitioner appealed the PTABs decision on the theory that the decision was based on incorrect claim construction.

The Federal Circuit reviewed the PTAB’s decision and concluded that it was supported by substantial evidence.  In its decision the Federal Circuit noted that the Petitioner assert that the features of the prior art were inherent, without submitting evidence demonstrating the features were inherent.  The Federal Circuit noted that a petitioner in an inter partes review has the burden of demonstrating unpatentability by a preponderance of the evidence; bare assertion through implication that a reference discloses a claim limitation, without more, is not enough to meet this burden.

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