CAFC: PTAB Improperly Shifted Burden of Proof on Obviousness to Patent Owner in IPR

In a July 26, 2016 decision, the Federal Circuit reversed a Patent Trial and Appeal Board (“Board”) final written decision, on the grounds that the Board improperly shifted the burden of proof on the issue of obviousness to the Patent Owner.  Petitioner McClinton Energy Group originally filed an inter partes review (“IPR”) petition challenging the validity of claims in a patent owned by Magnum Oil Tools and directed to hydraulic fracturing, or “fracking.”  The IPR was instituted, and the Board found all of the challenged claims unpatentable as obvious in view of several prior art references.  Following trial, McClinton and Magnum entered into a settlement agreement, which provided that McClinton would not participate in an appeal of the Board’s decision.  When Magnum appealed, the Patent Office intervened to defend the Board decision.

http://www.ipwatchdog.com/2016/07/29/ptab-improperly-shifted-burden-proof/id=71409/