PTAB admits rare error over LED patent review
The US Patent Trial and Appeal Board (PTAB) has agreed to rehear an LED light bulb patent dispute, after admitting it “abused its discretion”.
The PTAB initially refused to examine a patent owned by Chinese manufacturer Jiaxing Super Lighting, having decided that New Jersey company MaxLite failed to establish a case for an inter partes review (IPR).
But in a new decision, the board said it wrongly placed the burden on MaxLite to raise all arguments as to why the Jiaxing patent claims weren’t entitled to an earlier priority date.
According to MaxLite, Jiaxing couldn’t show that the patent under review (US number 9,807,826 B2) could claim priority to an earlier filing in China (the ‘636 application).
The latest PTAB order agreed, concluding that Jiaxing “failed to demonstrate the ‘636 application provided written description of all of the challenged claims and failed to demonstrate that it could actually claim priority to the ‘636 application”.
In changing course, the PTAB acknowledged the legal “tension between requiring a party to raise an issue versus placing a burden on a party to prove an issue”.
The PTAB restated its position that a petitioner for IPR must first raise the issue of whether a patent owner is entitled to a particular filing date, and make a case as to why it is not.
Once this initial burden is met, however, the patent owner must then “make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by the petitioner”.
In this case, the PTAB said: “we failed to properly place the burden of production on [the] patent owner to present argument and evidence to show that each of the limitations of the challenged claims of the ‘826 patent could rely on an earlier priority date.”
The board went on to give a preliminary determination that the ‘826 patent couldn’t claim priority to the ‘636 application, because they don’t share any common inventors.
If the ‘826 patent can’t claim to the ‘636 application, then the latter should be regarded as prior art, the PTAB added.
The board confirmed that it had instituted an IPR trial for key claims of the ‘826 patent, beginning immediately.
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