Jackson Walker appealed and successfully reversed a decision of the Patent Trial and Appeal Board, on behalf of its client, Magnum Oil Tools International, Ltd. The Federal Circuit held, in a precedent decision, that the Board’s decision, holding Magnum’s patent (U.S. Patent No. 8,079,413) invalid as obvious, was in error because the petitioner failed to articulate a valid reason why the patent was obvious.
The Federal Circuit agreed with Magnum that the Board improperly shifted the burden of proof to the patentee and that the petitioner failed to articulate a motivation to combine the cited prior art. Significantly, the Federal Circuit emphasized that the Board cannot “raise, address, and decide unpatentability theories never presented by the petitioner and not supported by record evidence,” which helps to establish an important boundary on the authority of the Board during Inter Partes review.
Magnum was represented on appeal by John Jackson, Chris Rourk and Nate St. Clair.
To read the ruling, click here.
About Our Team
For more than eighteen years, John M. Jackson has represented a wide variety of clients in patent litigation and complex commercial litigation matters in federal and state courts throughout the country, and in the International Trade Commission. Chris Rourk is a Dallas intellectual property attorney with extensive experience handling high profile matters for clients, both those dealing with all aspects of intellectual property as well as corporate transactions, commercial litigation and other complex interdisciplinary matters. Nate St. Clair is an Intellectual Property litigator and counselor, and he counsels and represents clients in a wide range of Intellectual Property matters, with an emphasis on patent litigation, and patent portfolio licensing and management. His practice also includes performing infringement and invalidity analyses, patentability studies, risk assessments, and providing general IP counseling, particularly in the electrical and mechanical arts.
In the Media
- Law360’s Weekly Verdict: Legal Lions & Lambs, Law360
- PTAB erred in shifting burden of proof on obviousness to patentee, Wolters Kluwer IP Law Daily
- Fed. Circ. Reversal To Help Patent Owners In PTAB Appeals, Law360