Earlier this year, in E. I. du Pont de Nemours & Co. v. Synvina C.V. (Fed. Cir. 2018) (“Dupont v. Synvina”), the Federal Circuit found that the Patent Trial and Appeals Board (“the Board”) had erred in holding that in an inter partes review (IPR), the burden to produce evidence of patentability did not shift to the patentee.  Interestingly, in each of the previous two years the court also had occasion to address burden shifting in IPRs.  In In re Magnum Oil Tools International, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (“Magnum Oil”), the Board was found to have been wrong in deeming that when it institutes an IPR – which requires concluding that the petitioner has met the “reasonable likelihood of success” standard – that conclusion operated to shift the burden of producing evidence of patentability to the patentee.  Also, in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (“Aqua Products”), the court considered whether a patentee could amend claims during an IPR only if it accepted the burden of proving that the substitute claims were patentable… The trio of cases, Dupont v. Synvina, Magnum Oil, and Dynamic Drinkware, considered together, are helpful for one’s understanding of the burden shifting framework in both IPR and district court litigation.
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