Burden on Respondents to Prove Prior Invention in ITC Patent Validity Disputes, says CAFC
In section 337 patent cases, the party attempting to establish that a patent is invalid because of prior invention bears the burden of proving the prior invention indeed came first, said the Court of Appeals for the Federal Circuit in reversing part of an International Trade Commission determination. According to CAFC, when the dates of conception or notification of the invention overlap, the tie goes to the complainant in validity determinations in section 337 cases.
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In the ITC investigation at issue, the ITC found no violation by imports of Malaysia and U.S.-based Carsem’s encapsulated integrated circuit devices and products containing same (337-TA-501), in part because a foreign third-party notified the U.S. of a similar invention in April or May the year of invention, while complainant Amkor Technology conceived of the invention between May and December of the same year. In its determination and arguments before the court, ITC relied on CAFC’s 1998 Oka v. Youssefyeh ruling to say that the earliest possible date of conception for a party that can only provide a range of dates is the last date in that range. Therefore, the ITC said Amkor’s patent was conceived in December, while the foreign third-party’s invention was notified in May.
Amkor first argued that, in order to anticipate the patent at issue, the foreign third-party had to notify the U.S. government in writing. CAFC disagreed, and said the statute in question, 35 USC 102(g), requires only that a foreign party communicate its invention to the U.S. government, in writing or orally.
But CAFC said the Oka rule on interpreting date ranges for inventions does not apply to patent holders in patent validity disputes, because Oka dealt with a type of case with different burdens of proof (interferences). To invalidate a patent, CAFC said, the burden lies with the party trying to invalidate it. To say that the patent might be invalid is not enough. Therefore, with the possibility that both patents were either notified or conceived in May, the ITC erred in ruling the patent invalid. CAFC also declined to affirm the ITC’s invalidity determination on alternative grounds raised by Carsem.
Therefore, CAFC reversed the ITC’s invalidity determination, and remanded to the ITC for further proceedings.
(Amkor Technology, Inc. v. ITC, Court No. 2011-1550, dated 08/22/12, Judges Newman and Linn.
Lead counsels: Bryan Farney of Dechert for appellant Akmor; Michael Lieberman for appellee ITC; William Bohler for intervenor Carsem.)