By Donald Zuhn —

Last month, in an opposition brief filed by attorneys for the U.S. Patent and Trademark Office
and Department of Justice, the Office asked the Supreme Court to deny petitioner's
writ of certiorari in Finjan, Inc. v. United States Patent and
Trademark Office.  The question
presented by petitioner was:

Whether, in proceedings to determine whether
a pa­tent application should be granted, the United States Patent and Trademark
Office bears the burden of demonstrating that a prior art printed publication
that anticipates the invention for which the patent is sought enables a person
of skill in the art to practice the inven­tion.

As the Office outlines in
its brief, the case involves U.S. Patent No. 6,167,520,
entitled "System and method for protecting a client during runtime from
hostile downloadables," which issued December 26, 2000.  In 2007, the Office granted a request for ex parte reexamination, and in 2009, the
examiner rejected all of the claims as being anticipated by a single reference
(the Endrijonas reference).  Finjan
appealed the examiner's rejection to the Board, arguing that the Endrijonas reference
did not enable persons of skill in the art to practice the invention, but the
Board affirmed the examiner's rejection in 2011, determining that Finjan had
failed to establish that the Endrijonas reference was not enabling.  Finjan then appealed to the Federal Circuit,
where it argued that the examiner, in initially rejecting the claims, had not
established that the Endrijonas reference was enabling, and that the burden of
demonstrating that the Endrijonas reference was not enabling should not have
been placed on the applicant.  Following
the Federal Circuit's decision in In re
Antor Media Corp.,
where the Court indicated that it had long held that when an examiner rejects a
claim as being anticipated by a prior art patent, the patent is pre­sumed
enabling for purposes of the examiner's prima
facie showing of anticipation, the Court affirmed the Board's decision
without opinion.

In response to Finjan's
contention "that 'the examiner should bear the burden of proving that an
alleged anticipatory reference is enabled' when that reference is a printed
publication," the Office argues that such contention "lacks
merit," and that "[f]urther review is not warranted."  The Office notes that "[o]nce the
examiner makes an anticipa­tion rejection in compliance with Section 132, the
burden is on the applicant to demonstrate that the rejection was erroneous,"
adding that "[o]ne way in which the applicant may do so is by establishing
that the prior art reference's disclosure would not enable one skilled in the
art, without undue experimentation, to practice the invention for which the
applicant seeks a patent."  With
respect to the presumption of enablement, the Office argues in its brief that
the presumption:

[R]eflects the Federal Circuit's recognition
that requiring the examin­er preemptively to make the detailed findings
necessary to verify enablement would be "manifestly inefficient,"
"burdensome," and "entirely unnecessary."  Jung, 637 F.3d at 1363.  Because the enablement inquiry requires an
analysis of the degree of experimentation necessary to implement an invention,
"an examiner, who has no access to experts or laboratories, is not in a
position to test each piece of prior art for enablement in citing it, and
requiring him to do so would be onerous, if not im­possible."  Antor, 689 F.3d at 1288.

While noting that Finjan
"recognizes that the presumption of enablement is justi­fied when the
allegedly anticipatory reference is an existing patent because an issued patent
necessarily reflects the PTO's determination that the patent's dis­closures
enable the invention," the Office states that Finjan contends, by
contrast, that "printed publications 'do not go through the same scrutiny.'"  However, the Office argues that:

Whether the prior art is a patent or a
printed publication, requiring the examiner to determine whether the prior art
enables the creation of the invention without undue experimentation would force
the PTO to engage in burdensome preemptive investigation and experimentation in
order to anticipate and address enablement issues that the applicant might
choose not to dispute.  And when the
applicant does dispute enablement, he "is in a better position to show, by
experiment or argument, why the disclosure in ques­tion is not enabling or
operative."  Antor, 689 F.3d
at 1288.

Although the Office
acknowledges that "[t]o be sure, the prior PTO scrutiny accorded to an issued
patent makes that patent likely, as a practical matter, to be enabling,"
the brief argues that even when the prior art reference is a printed
publication, "the rationale identified by the Federal Circuit in Antor applies
with full force," adding that "[i]n any event, if the appli­cant
chooses to dispute enablement, the PTO must ad­dress that issue before denying
the patent on anticipa­tion grounds."

Finjan's petition and the
Office's brief have been distributed for conference on September 30.