Disproving Prior Art Enablement Becomes Patent Applicant's Responsibility

Submitted by General Patent on Mon, 07/30/2012 - 18:07

If your patent is in reexamination, be forewarned: It's up to you to prove that any relevant prior art isn't enabling or anticipatory of your patent claims.

Antor Media Corp. owns a patent (the ’961 patent) relating “to a method and apparatus for transmitting information recorded on digital disks from a central server to subscribers via a high data rate telecommunications network.” Antor sued several companies for patent infringement, resulting in a number of ex parte reexamination requests that were merged into a single reexamination.

In that ex parte reexamination, the Board of Patent Appeals (BPAI) rejected Antor Media Corp.'s patent claims as invalid because the patented technology is both anticipated and obvious based on four pieces of prior art. Antor appealed that rejection before the Court of Appeals for the Federal Circuit (CAFC), claiming that the examiner hadn't provided evidence that the published prior art reference would enable one skilled in the art to practice the invention.

The CAFC, however, affirmed the BPAI's decision - and ruled that patentees shoulder the burden of proving that prior art is not enabling:

"[D]uring patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement.”

Though the above ruling focuses on anticipation, Antor also appealed the obviousness ruling - but lost that appeal as well.