Court Reaffirms Decision in Proxyconn  That Patent Owner Has Burden to Establish Patentability of Proposed Substitute Claims

Author: Shawn S. Chang
Editor: Jeff T. Watson

In Nike, Inc. v. Adidas AG, No. 14-1719 (Fed. Cir. Feb. 11, 2016), the Federal Circuit reaffirmed the Patent Trial and Appeal Board’s interpretation of 37 C.F.R. § 42.20(c), and the Court’s prior decision in Proxyconn, in placing the burden on the patent owner to establish patentability over the prior art of proposed substitute claims.

In reaching its decision, the Federal Circuit explained that the very nature of IPR is distinctly different from a typical PTO examination or reexamination, where a patent examiner conducts a patentability analysis of all claims—substitute claims proposed in IPR are not subject to further examination. The Court also explained that, under 35 U.S.C. § 316(a)(9), the patent owner has an obligation to provide “information…in support of any amendment.” According to the Court, this indicates that the patent owner carries an affirmative duty to justify why newly drafted claims should be entered into the proceeding. The Court rejected Nike’s argument that 35 U.S.C. § 316(e) places on the petitioner the burden of proving unpatentability of newly proposed substitute claims, noting that that provision relates to “those issued claims that were actually challenged in the petition for review and for which the Board instituted review.”

The Federal Circuit also held that, absent an allegation of conduct violating the duty of candor, a simple statement from the patent owner may be sufficient to meet the requirement that the patent owner persuade the Board that the proposed substitute claim is patentable over prior art not of record but known to the patent owner, thus rejecting the Board’s conclusion that Nike’s motion should have addressed specific prior art references not of record.

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.


Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: