ULTIMATE BURDEN OF PROVING INVALIDITY NEVER SHIFTS, ALTHOUGH BURDEN OF GOING FORWARD MAY JUMP FROM ONE PARTY TO ANOTHER

Technology Licensing Corporation, v. Videotek, Inc., [2007-1441, -1463] (October 10, 2008) [PLAGER, Newman, Schall] The Federal Circuit affirmed the district court.
DISCUSSION: The first issue, patent validity, turned on whether the patentee was entitled to the filing date of an earlier patent application. The Federal Circuit explained its recent holding in PowerOasis that once a challenger (the alleged infringer) has introduced sufficient evidence to put at issue whether there is prior art alleged to anticipate the claims being asserted, prior art that is dated earlier than the apparent effective date of the asserted patent claim, the patentee has the burden of going forward with evidence and argument to the contrary. It is a long-standing rule of patent law that, because an issued patent is by statute presumed valid, a challenger has the burden of persuasion to show by clear and convincing evidence that the contrary is true. That ultimate burden never shifts, however much the burden of going forward may jump from one party to another as the issues in the case are raised and developed. Correctly understood, PowerOasis is fully consistent with this understanding; until such time as these rules are abrogated by statute, by this court sitting en banc, or by the Supreme Court, the opinion in PowerOasis could not be otherwise.