As reported here mid-year, a court denying a finding of patent invalidity does not prevent an opposing ruling from USPTO. Now an appeals court has affirmed that ruling, and in doing so explained how different burdens of proof can result in different conclusions.
As Jim Singer pointed out in IP Spotlight, USPTO considers whether there is a preponderance of evidence to overturn a patent claim, and importantly, “no presumption of patent validity exits in a reexamination proceeding.”
In contrast, the courts presume a patent to be valid and require proof of invalidity to meet a “clear and convincing” evidence standard. In some instances, especially when a business model is at stake, it may pay to bring parallel actions.