Overview

Challengers may bring an action in district court seeking a declaratory judgment on invalidity. Alleged infringers often bring counter-claims seeking declaratory judgment that asserted patents are invalid or unenforceable. Challengers may also seek a ruling on invalidity from the PTO by filing a request for a Post-Grant review. This section focuses on actions in District Court. However, much of the material presented here applies equally to PTAB reviews.

A patent is presumed valid from the time it issues. Each claim of a patent is presumed valid independent of the validity of other claims.

A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

35 U.S. Code § 282 (a).

The party that brings a validity challenge bears the burden to prove invalidity.

A patent is presumed valid, and the burden of establishing invalidity as to any claim of a patent rests upon the party asserting such invalidity. 35 U.S.C. § 282 (1982). The presumption of validity is a procedural device that mandates that the party asserting invalidity bears the initial burden of establishing a prima facie case of obviousness under 35 U.S.C. § 103.

Ashland Oil, Inc. v. Delta Resins & Refractories, 776 F. 2d 281, 291 (Fed. Cir. 1985).

A challenger must establish invalidity by clear and convincing evidence.

Under § 282 of the Patent Act of 1952, "[a] patent shall be presumed valid" and "[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity." 35 U.S.C. § 282. We consider whether § 282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.

Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238, 2242 (S. Ct. 2011).

The requirements for patentability must exist ex-ante, at the time a patent application is submitted and findings must reflect the risks posed by hindsight bias.

A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.

KSR Intern. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (S. Ct. 2007).

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