The PTAB’s final written decision in Inguran, LLC d/b/a Sexing Techs. v. Premium Genetics (UK) LTD., Case PGR2015-00017, Paper 22 (PTAB 2016), illustrates what a Patent Owner must do to demonstrate that a challenged claim is entitled to an earlier effective filing date in an AIA trial.

The PGR involved U.S. Patent 8,933,395, which issued from an application filed on January 31, 2014, that was a continuation of pre-AIA patent applications filed before March 15, 2013, with the same text as those prior applications. As we explained in our prior post, the PTAB instituted PGR of claims 1-14, despite the patent’s claimed pre-AIA effective filing date. The PTAB found, at that institution phase, that claim 2 of the patent was only entitled to a post-AIA effective filing date and, thus, the entire patent and all of its challenged claims were eligible for PGR. The PTAB instituted review on multiple grounds, including anticipation by each of Mueth, Frontin-Rollet, and Durack.

The patent owner requested rehearing of the institution decision, arguing that neither Mueth nor Frontin-Rollet qualify as prior art to claim 1 because, according to the patent owner, claim 1 is entitled to a pre-AIA effective filing date. The PTAB disagreed, stating that “our Decision addressed the specific limitations of claim 1 argued in the Petition and Preliminary Response regarding standing for post-grant review on the basis of claim 1,” and “[f]or this reason, our Decision cannot be read fairly as affirming the entitlement of claim 1 to an effective filing date before March 16, 2013.” After the decision denying the rehearing request, whether claim 1 was entitled to an effective filing date before March 16, 2013, remained an open issue.

The patent owner responded by arguing that it was petitioner’s burden to show that claim 1 is not entitled to an earlier effective filing date, and that the patent owner had met its burden of production.

In its final written decision, the PTAB explained that “although the burden of persuasion to prove unpatentability always rests with petitioner, the burden of production for showing that a patent claim is entitled to an earlier effective filing date shifts between the party asserting the entitlement and the party asserting lack of entitlement.” The PTAB explained that petitioner met its initial burden of production by providing references with filing dates prior to the actual filing date (January 31, 2014) of the patent, and asserting that the references disclose each of the limitations of claim 1. The burden of production then shifted to patent owner to produce evidence to demonstrate that the references are not prior art.

With respect to the patent owner’s position that it met its burden of production in the Preliminary Response, the PTAB noted that the patent owner had only argued that there was adequate written description support in the patent applications filed before March 16, 2013, for one specific limitation of claim 1: “Patent Owner, however, does not address the remaining limitations of claim 1 and whether the prior applications disclose those remaining limitations in the manner required by § 112(a).” The PTAB concluded that “Patent Owner’s arguments addressing only the at least one channel limitation of claim 1 … are insufficient to meet Patent Owner’s burden of coming forward with evidence or argument to show possession of the invention, with all its claimed limitations, as of the September 3, 2004 filing date.”

Based on this conclusion, the PTAB determined that the challenged claims were anticipated by prior art. The decision is, thus, an important reminder that in establishing standing for post-grant review, a petitioner may not need to address every claim limitation, but a patent owner will need to show that every limitation finds support in the asserted priority application to establish its entitlement to an earlier effective filing date.