Recently, a jury in a patent infringement case found for the plaintiff, deciding that all three patents-in-suit were “valid” (actually, “not invalid”) and infringed. A happy plaintiff, right? Wrong! The very next day, the Patent Office Board of Patent Appeals and Interferences (the B.P.A.I.) ruled that the defendant was actually the first to invent the subject matter of the patents and that rights to these inventions, therefore, belonged not to the plaintiff, but to the defendant.
[Streck Inc. v. Research & Diagnostic Systems Inc. et al. (the lawsuit) and Alan M. Johnson v. Wayne L. Ryan (the interference proceeding).]
The reader may ask, “How could this happen?” (This is, of course, a hypothetical reader). The answer is, the court and the patent office apply different standards to the issue of “priority of invention.” In court, patents-in-suit are presumed to be valid and a defendant alleging that it was actually the first inventor has the burden to prove this by “clear and convincing evidence.”
In the patent office, when two parties are claiming patent rights to the same invention, the party with the earlier filing date – the “senior party” – is presumed to be the first inventor, but the burden on the – you guessed it – “junior party” to overcome this presumption is only by “a preponderance of the evidence.” This is often a much easier burden to satisfy.
Soooo, if the B.P.A.I. decision is upheld on appeal (appeals go to the Court of Appeals for the Federal Circuit – the C.A.F.C.), Streck is out of luck despite its courtroom victory. (BTW, the jury’s judgment was only $92,298.88.)
THE LESSON TO BE LEARNED: As Yogi was wont to say, “it ain’t over till it's over.” If you’re the defendant, consider all of your defenses.