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No Modification to a Challenger's Burden of Persuasion Upon Showing of Allegedly Anticipatory Prior Art


In Technology Licensing Corp. v. Videotek, Inc. (Nos. 07-1441, -1463; Oct. 10, 2008), the Federal Circuit affirms a trial court's judgment of invalidity, noninfringement, and no inequitable conduct.

The Federal Circuit clarifies its recent ruling in PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008), on which party bears the burden of proof to prove entitlement to an earlier filing date. Despite legal commentary to the contrary, PowerOasis simply held that, when an alleged infringer has introduced sufficient evidence to show that there is anticipatory prior art dated earlier than the application date of the asserted patent, the patentee has the burden of going forward with evidence to the contrary. The Federal Circuit reiterates, however, that "[i]t is a long-standing rule of patent law" that the burden of persuasion never shifts and thus remains with the alleged infringer to show by clear and convincing evidence that a patent is invalid.

Similarly refusing to disrupt consistent case law on the issue of inequitable conduct, the court rejects an argument that an anticipatory prior art reference is material as a matter of law. A reference that is cumulative to other prior art of record cannot be material for purposes of inequitable conduct.


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Mark Supko
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