Queen's University at Kingston v. Samsung Electronics Co., Ltd., et al.

A party asserting patent invalidity bears the burden of establishing that the patent is invalid. 35 U.S.C. § 282. This burden includes not only persuasion, but also the initial production of evidence. Microsoft Corp. v. I4I Ltd. P’ship, 564 U.S. 91, 107 (2011). To invalidate, prior art must enable one of ordinary skill to make the claimed invention without undue experimentation. The Federal Circuit does not, however, place the initial burden of producing evidence to establish this element of invalidity on patent challengers. Instead, it requires patent owners to prove that prior art references are not enabled. Procedurally, this approach results in the first evidence concerning enablement being presented by the patent owner after a challenger’s initial showing on the other elements of invalidity during inter partes review proceedings before the Patent Trial and Appeals Board (the “Board”). The Board then permits the challenger to provide evidence of enablement in its reply. The Administrative Procedure Act affords parties to formal adjudications the right “to submit rebuttal evidence . . . as may be required for a full and true disclosure of the facts.” 5 U.S.C. § 556(d). The Board, however, denies that right to patent owners when challengers raise evidence of enablement for the first time in reply under the Federal Circuit’s order of proof. The question presented is: Does the Federal Circuit’s requirement that patent owners negate enablement of prior art