Ex parte Grillo-Lopez, Appeal No. 2018-006082 (April 7, 2020).

On April 7, 2020, The PTAB denied rehearing in Ex parte Grillo-Lopez (August 28, 2019) and issued a precedential decision explaining the denial. The appeal concerned final rejections that the examiner issued based upon an FDA transcript, which applicants argued was not prior art. The FDA transcript in question was the subject of previous IPRs, where the PTAB held that the FDA transcript was not shown to have been a printed publication. Opinion at 2, fn 2.

In denying the rehearing, the PTAB explained that examination involves a “burden-shifting framework” and that an examiner only must set “forth the nominal publication date.” Id. at 2. The PTAB further stated that “[t]he Patent and Trademark Office is in no position to establish any thing beyond that.” Id.

The examiner’s obligations are unlike an IPR petitioner, who bears the burden to present evidence and arguments showing that it is reasonably likely to succeed in proving unpatentability.   Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13, 19-20 (PTAB December 20, 2019) (precedential). Thus, all an examiner must do is to identify a date, and the patent applicant must show that the cited art was not publicly available in order to remove the reference.