In an opinion addressing the burdens of proof and deference to the U.S. Patent and Trademark Office (USPTO), the U.S. Court of Appeals for the Federal Circuit affirmed a trial court by upholding a finding of invalidity after a bench trial. Technology Licensing Corp. v. Videotek, Inc., Case Nos. 07-1441, -1463 (Fed. Cir., Oct. 10, 2008) (Plager, J.).
The technology-in-suit involved the separation of sync signals from video signals. Technology Licensing Corporation (TLC), the patent owner, appealed from the trial court's judgment of invalidity. Third-party defendant Gennum, a supplier of sync separation chips, raised the affirmative defense that an asserted claim was anticipated by two prior art sync separation chips in 1993. In response, TLC contended that the invention of the asserted claim was entitled to an effective filing date of 1992. Gennum argued that the invention was not entitled to the earlier date because the 1992 application lacked adequate written support under the written description requirement of 35 U.S.C. § 112, ¶ 1, as shown by new matter added in 1995. The trial court agreed with the accused infringer and held that the claim was invalid for anticipation.
On appeal, TLC argued that the trial court erred by improperly placing the burden on TLC to prove its entitlement to the earlier priority date. The Federal Circuit explained that the ultimate burden of proving invalidity always stays with the accused infringer. However, the burden of production, also known as the burden of "going forward with evidence," does shift. The burden of going forward means "both producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record, as the case may require."
The Federal Circuit held that the trial court had properly placed the ultimate burden of persuasion on the proponent of invalidity. After TLC met its initial burden of going forward with evidence of infringement, Gennum had the burden of going forward with evidence of its anticipation defense. TLC then had the burden of going forward with evidence that the alleged prior art was not prior art because the claim had an effective filing date predating the alleged art. TLC was required to show the existence of the 1992 application and explain why the written description adequately supported the claim. The burden of going forward would then shift back to the proponent of the invalidity defense to persuade the court that the claim was not entitled to the earlier date. The Federal Circuit held that the trial court did not place the ultimate burden of persuasion on TLC, but instead determined that Gennum had met its burden of persuading the court that the earlier application failed to contain adequate support for the claim.
TLC also argued that the USPTO's reissuance of the patent during the appeal was pertinent and entitled to deference. The Court sharply disagreed, stating that, "in a circumstance such as this, judicial efficiency and the policy of repose counsels against our re-weighing of the evidence to add an additional deference-thumb to the scale, or even more disruptive, our asking the trial court to reopen the entire invalidity question to reweigh the intangible worth of additional deference." The Court further noted that, when dealing with the intangible worth to be accorded an administrative agency's decision making, the judicial process cannot be held hostage to the timing of either the agency or the litigants who have invoked the agency's further review. The Court concluded that, absent a stay from the trial court or extenuating circumstances, a case must be decided on the record presented for appeal.
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