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

Client Alert | 1 min read | 10.20.08

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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Client Alert | 4 min read | 08.07.25

File First, Facts Later? Eleventh Circuit Says That Discovery Can Inform False Claims Act Allegations in Amended Complaints

On July 25, 2025, the Eleventh Circuit Court of Appeals issued its decision in United States ex. rel. Sedona Partners LLC v. Able Moving & Storage Inc. et al., holding that a district court cannot ignore new factual allegations included in an amended complaint filed by a False Claims Act qui tam relator based on the fact that those additional facts were learned in discovery, even while a motion to dismiss for failure to comply with the heightened pleading standard under Federal Rule of Civil Procedure 9(b) is pending.  Under Rule 9(b), allegations of fraud typically must include factual support showing the who, what, where, why, and how of the fraud to survive a defendant’s motion to dismiss.  And while that standard has not changed, Sedona gives room for a relator to file first and seek out discovery in order to amend an otherwise deficient complaint and survive a motion to dismiss, at least in the Eleventh Circuit.  Importantly, however, the Eleventh Circuit clarified that a district court retains the discretion to dismiss a relator’s complaint before or after discovery has begun, meaning that district courts are not required to permit discovery at the pleading stage.  Nevertheless, the Sedona decision is an about-face from precedent in the Eleventh Circuit, and many other circuits, where, historically, facts learned during discovery could not be used to circumvent Rule 9(b) by bolstering a relator’s factual allegations while a motion to dismiss was pending.  While the long-term effects of the decision remain to be seen, in the short term the decision may encourage relators to engage in early discovery in hopes of learning facts that they can use to survive otherwise meritorious motions to dismiss....

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