Shifting Burden Dooms Patent Owner

By Hailey Stewart,* Evan Tassis and Matt Johnson –

In a Final Written Decision, the PTAB declared claims of a patent unpatentable after finding the patent was not entitled to the earlier priority date of the anticipatory reference in Platinum Optics Technology, Inc. v. Viavi Solutions Inc., IPR2022-01489 (Apr. 11, 2024). Notably, the PTAB shifted the burden of production to Patent Owner to show the '794 patent was entitled to the filing date of the reference (the "Hendrix" reference) and Patent Owner ultimately failed to show the claims of the '794 patent had adequate written description support in Hendrix to claim priority.

The PTAB's written decision arose from a petition requesting inter partes review of claims in the '794 patent directed to an optical filter and sensor system. Both Petitioner and Patent Owner agreed that the '794 patent claimed priority to Hendrix. However, Petitioner argued that Hendrix did not contain adequate written description of the