Sunday, November 8, 2009

BPAI panel says inter partes case irrelevant to an appeal

Recently, I posted (here) about a BPAI case that questioned the relevance of infringement claim construction case law in a BPAI appeal, given that different standards of claim construction apply.

In another case, Ex parte Anderson, the Board criticized the Applicant for citing a Federal Circuit infringement decision related to inherency. This time the Board's reasoning focused on how the burden of production differs in ex parte and inter partes practice:
[Applicant] cites inter partes infringement decisions to make the same points [about inherency]. We, on the other hand, have gone out of our way to limit the citations to ex parte decisions. There is a reason. Ex parte practice differs from inter partes infringement practice. For example, it is possible for the Examiner to make out a prima facie case of inherency by establishing that an applicant's claimed composition prima facie appears to be the same as a composition described in a reference. Unlike accused infringers in inter partes infringement cases (or for that matter parties in interference cases), the USPTO has no means for making and comparing properties or characteristics of compositions. Accordingly, if the Examiner has a reasonable basis for believing that a reference describes a claimed product, the burden of going forward with the evidence shifts to the applicant. The burden of going forward with the evidence applicable in ex parte practice does not apply in inter partes cases.
(Decision, pp. 13-14.)
As I noted in my earlier post, I have seen this criticism from the Board only a few times. So I probably won't change my practice, unless I find a good "In Re" case that says the same thing that the infringement case does.

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