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Titan v. Case: litigants may err in addressing proper presumptions?

By Lawrence B. Ebert, Esq.

Titan and Goodyear lost on a request for a preliminary injunction in a tractor tire design patent case.

Interesting text from the CAFC-->

In the appeal before us, the parties stated the issue as whether Case succeeded
before the trial court in raising a substantial question of invalidity. As we shall explain, when the issue is expressed only in terms of whether the alleged infringer raised a substantial question of invalidity, litigants may err in addressing the proper presumptions and burdens of proof in their case, and their arguments may reflect a possible misunderstanding of the applicable law.

Other text:

At trial, as we explained in our recent case of Technology Licensing Corp. v.
Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008), an issued patent comes with a
statutory presumption of validity under 35 U.S.C. § 282. Because of this presumption,
an alleged infringer who raises invalidity as an affirmative defense has the ultimate
burden of persuasion to prove invalidity by clear and convincing evidence, as well as the initial burden of going forward with evidence to support its invalidity allegation.4 Tech. Licensing, 545 F.3d at 1327. Once the challenger presents initially persuasive evidence of invalidity, the burden of going forward shifts to the patentee to present contrary evidence and argument.

Before trial, when the question of validity arises at the preliminary injunction
stage, the application of these burdens and presumptions is tailored to fit the preliminary injunction context. To begin, the patent enjoys the same presumption of validity during preliminary injunction proceedings as at other stages of litigation. Canon Computer Sys., Inc. v. Nu-Kote Int?l, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998).

While the evidentiary burdens at the preliminary injunction stage track the
burdens at trial, importantly the ultimate question before the trial court is different. As this court explained in New England Braiding Co. v. A.W. Chesterton Co., the trial court ?does not resolve the validity question, but rather must . . . make an assessment of the persuasiveness of the challenger?s evidence, recognizing that it is doing so without all evidence that may come out at trial.? 970 F.2d 878, 882-83 (Fed. Cir. 1992). Instead of the alleged infringer having to persuade the trial court that the patent is invalid, at this stage it is the patentee, the movant, who must persuade the court that, despite the challenge presented to validity, the patentee nevertheless is likely to succeed at trial on the validity issue.

**In this case a design patent was at issue -->

Our precedents teach that ?the ultimate inquiry under section 103 is whether the
claimed design would have been obvious to a designer of ordinary skill who designs
articles of the type involved.? Durling v. Spectrum Furniture Co., 101 F.3d 100, 103
(Fed. Cir. 1996) (citing In re Rosen, 673 F.2d 388, 390 (CCPA 1982)). Durling explains that this general principle translates into ?whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design,? id. (citing In re Borden, 90 F.3d 1570, 1574 (Fed Cir 1996)), and that this in turn requires that ?one must find a single reference, ?a something in existence, the design characteristics of which are basically the same as the claimed design.?? Id. (quoting In re Rosen, 673 F.2d at 391). Once the primary reference is found, other ?secondary? references ?may be used to modify it to create a design that has the same overall visual appearance as the claimed design.? Id. Further, these secondary
references must be ??so related [to the primary reference] that the appearance of certain
ornamental features in one would suggest the application of those features to the
other.?? Id. (quoting In re Borden, 90 F.3d at 1575 (alteration in original)).

Full post as published by IPBiz on June 03, 2009 (boomark / email).