PTAB Admits Mistake, Reverses, And Institutes

In a rare turn of events the Patent Trial and Appeal Board recently granted a rehearing request in Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appl. Co., Ltd.,  No. IPR2020-00208, Paper 14 (P.T.A.B. June 1, 2021), stating that "we abused our discretion in denying institution" based on an improper allocation of the parties' burdens when a petitioner challenges an alleged priority date. The decision provides insight for both patent owners and petitioners in the high-stakes game of inter partes review (IPR) when a patent's claimed priority date is in dispute. The decision also highlights issues of common inventorship when claiming priority to foreign applications.

In IPRs, the petitioner bears the initial burden of demonstrating a reasonable likelihood that at least one of the challenged claims is unpatentable. A petitioner may meet this burden by showing that a patent is anticipated or obvious in light of prior art that predates the patent's filing date. A