Takeaway: The burden of proof regarding whether the petitioner has identified all of the real parties-in-interest as required by 35 U.S.C. § 312(a)(2) is on the petitioner.

In its Decision, the Board denied Petitioner’s request for rehearing of its order terminating the proceeding on the basis that not all real parties-in-interest had been identified in the Petition as required by 35 U.S.C. § 312(a)(2). Petitioner requested rehearing specifically arguing that the allocation of the burden was an erroneous conclusion of law and the finding that AGLR is a real party-in-interest was erroneous as a matter of law. The Board stated that the burden of showing that the termination order must be modified is on the party challenging the decision. 
Regarding the burden, the Board stated that, in its termination order, it concluded that petitioners bear the burden of establishing that they have identified all real parties-in-interest. There is a rebuttable presumption that the identification of the real parties-in-interest in the petition is accurate, but “when . . . a patent owner provides sufficient rebuttal evidence that reasonably brings into question the accuracy of a petitioner’s identification of the real parties-in-interest, the burden remains with the petitioner to establish that it has complied with the statutory requirement.”

Petitioner argued that the allocation of the burden is inconsistent with Supreme Court authority, that it is inconsistent with prior Patent Office decisions, and that it is inconsistent with earlier conduct during the proceeding. Regarding the Supreme Court authority, the Board recognized that it analyzed the six factors of Taylor vv. Sturgell, 553 U.S. 880 (2008), however, the Board found that Petitioner was drawing an inappropriate parallel regarding the burden of proof in Taylor. In Taylor, the Court was discussing an affirmative defense. However, here, identification of real parties-in-interest is part of petitioner’s initial case. Therefore, the burden must be allocated with the petitioner.

The Board then noted that while the prior decisions of the Patent Trial and Appeal Board cited by Petitioner appear to assign burden on patent owners to prove that petitioners’ identification of real parties-in-interest is inaccurate, the Board can draw a distinction between the ultimate burden of persuasion and the intermediate burden of production.

Lastly, Petitioner cited an acknowledgement by Patent Owner that it assumed the ultimate burden of proof. The Board found that an incorrect assumption by the parties, even when shared, does not absolve it of the responsibility to interpret the law. The Board then turned to its finding that AGLR is a real party-in-interest. Petitioner argued that Patent Owner did not present sufficient rebuttal evidence to shift the burden back to Petitioner on this issue. The Board did not find this argument persuasive, and noted that Petitioner did not identify matters that it believes the Board misapprehended or overlooked.

Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., IPR2013-00453
Paper 91: Decision Denying Request for Rehearing
Dated: February 23, 2015
Patent: 5,810,029
Before: Jennifer S. Bisk, James B. Arpin, and Patrick M. Boucher
Written by: Boucher