PTAB Precedential and Informative Decisions

Precedential Decisions:

General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (September 6, 2017). Provides factors to consider when Board considers a follow-on petition pursuant to 35 U.S.C. § 314(a).

Ex parte McAward, Appeal 2015-006416 (PTAB Aug. 25, 2017) . Explaining that the PTO’s approach to indefiniteness, post Nautilus, is unchanged.

Athena Automation Ltd. v. Husky Injection Molding Sys Ltd.IPR2013-00290, Paper 18 (October 25, 2013). Determining that assignor estoppel does not apply to PTAB proceedings.

Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in IPR proceedings.

Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in CBM proceedings.

Oracle Corp. v. Click-to-Call Techs, LP, IPR2013-00312, Paper 26 (October 30, 2013) (precedential only as to Section III.A.) – This decision pertains to interpretation of “served with a complaint” for purposes of triggering the one-year time bar set forth in 35 U.S.C. § 315(b).

MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (July 15, 2015) – This order provides guidance on patent owner’s burden to show entitlement to substitute claims.

Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Paper 38) (March 4, 2016) – This decision interprets 35 U.S.C. § 312(a)(2) (real parties in interest).

LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (Sept. 17, 2015). Provides guidance regarding the the “served with a complaint” requirement of 35 U.S.C. § 315(b). One year bar for filing an IPR may be triggered if earlier of two complaints was dismissed partially with prejudice and partially without.

Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (May 14, 2015). Provides guidance regarding CBM estoppel provisions of 35 U.S.C. § 325(e)(1). Estoppel is applied on a claim-by-claim basis – petition for CBM is not necessarily barred if it addresses different claims than those that were the subject of a prior final written decision.

SecureBuy LLC v. CardinalCommerce Corp., CBM 2014-00035, Paper 12 (Apr. 25, 2014). Provides guidance on the scope of 35 U.S.C. § 325(a)(1), including what is meant by a petitioner (or its real party in interest) previously “filed a civil action challenging the validity of a claim in the patent.”

See also, generally, USPTO Listing of Precedential Decisions.

Informative Decisions:

Ex parte Ditzik, 2018-000087 (Mar. 2, 2018) – holding that the Examiner’s invocation of issue preclusion was not in error based on Appellant’s arguments. Appellant’s unpersuasive arguments included (A) the standards of proof differ between a district court and the PTO; (B) the new claims differ from the invalidated claims; (C) Appellant provides new evidence; (D) incorrect trial testimony led to the district court and Federal Circuit reaching the wrong result; (E) Appellant did not have a full and fair opportunity to litigate; (F) the district court’s judgments are not final; (G) the PTO was not a party to the prior litigations; and (H) the Board should use its discretion to provide expert guidance.

Ex parte Jung, 2016-008290 (Mar. 22, 2017) – applying the Federal Circuit’s decision in SuperGuide Corp v. DirecTV Enters.,Inc., 358 F.3d 870, 885­–86 (Fed. Cir. 2004), which explains that there is a difference between a list separated by “and” and “or,” where the plain and ordinary meaning of “at least one of A and B” is the conjunctive phrase requiring the presence of both A and B. The Examiner can rebut the plain and ordinary meaning by providing the requisite supporting analysis that demonstrates that the claims, specification, or prosecution history necessitates a broader meaning.

Colas Sols. Inc. v. Blacklidge Emulsions, Inc., Case IPR2018-00242, Paper 9 (Feb. 27, 2018) – holding that 35 U.S.C. § 315(a)(1) bars institution of an inter partes review where a petitioner files a declaratory judgment action challenging the same patent before filing a petition.  The filing of a motion for joinder does not except a petition from the statutory bar of § 315(a)(1). The time bar of § 315(b) specifically states that it “shall not apply to a request for joinder under subsection (c),” whereas § 315(a)(1) does not include similar language.

Ariosa Diagnostics v. Isis Innovation Ltd., Case IPR2012-00022, Paper 55 (Aug. 7, 2013) – applying 37 C.F.R. § 42.53, which governs the taking of testimony in trail proceedings, and setting forth 12 general guidelines for taking a deposition in a foreign language.

Argentum Pharm. LLC v. Alcon Research, Ltd., Case IPR2017-01053, Paper 27 (Jan. 19, 2018) – applying 37 C.F.R. § 42.54(a), which states that “[t]he Board may, for good cause, issue an order to protect a party . . . from disclosing confidential information” and setting forth guidance as to how a party can establish “good cause” to seal information. In particular, a movant to seal must demonstrate that: “(1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.

Unified Patents, Inc. v. Berman, IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10); Hospira, Inc. v. Genentech, Inc.IPR2017-00739 (PTAB July 27, 2017) (Paper 16); Cultec, Inc. v. Stormtech LLCIPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7)- all three cases discussing the implementation of 35 USC § 325(d) where that statutory section was used to deny institution of an inter partes review trial.

General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (September 6, 2017). Provides factors to consider when Board considers a follow-on petition pursuant to 35 U.S.C. § 314(a).

Arris Group, Inc. v. C-Cation Technologies, LLC, IPR2015-00635, Paper 10 (May 1, 2015). Granting limited discovery request of indemnification agreements. Analysis of successful motion for additional discovery.

AOL Inc. v. COHO Licensing LLC, IPR2014-00771, Paper 12 (March 24, 2015). Discussing procedure for requests for expanded panels.

Conopco, Inc. v. The Procter & Gamble Co., IPR2014-00506, Paper 25 (December 10, 2014). Upon request for rehearing, PTAB determined that it did not abuse its discretion by determining that a follow-on petition raised substantially the same art or arguments, thus denying the follow on petition pursuant to 35 USC § 325(d). Also determining that the neither the members of the PTAB panel nor the movant had the authorization to expand the panel.

TRW Automotive US LLC v. Magna Elect., Inc., IPR2014-00293, -00294, -00296, -00297, -00298 (June 27, 2014). Determining that petitions should not be denied under either 35 USC § 315(b) (one year time bar) or 35 USC § 312(a)(2) (real party in interest (RPI)). Time Bar Issue:  amended complaint attached to a motion for leave to amend that is served on petitioner is not “service of a complaint” for purposes of § 315(b); service is official when complaint actually entered by district court. RPI Issue: Petitioner’s statement that two entities are related to Petitioner not sufficient factual basis to conclude that those two additional entities should have been identified as RPIs.

Cisco Sys., Inc. v. C-Cation Tech., LLCIPR2014-00454, Paper 12 (August 29, 2014). Violation of rule against incorporation by reference leads denial of institution. Board will not consider arguments that are not made in the petition, but are instead incorporated by reference to the cited paragraphs and claim charts of the expert.

Medtronic, Inc. v. Nuvasive, Inc.IPR2014-00487, Paper 8 (September 11, 2014). Denying petition pursuant to 35 USC § 325(d) because petitioner did not provide any persuasive reasoning as to why review should be instituted over previously-presented petition.

Unified Patents, Inc. v. Personalweb Tech., LLCIPR2014-00702, Paper 13 (July 24, 2014). Denying motion for joinder to a co-pending IPR proceeding pursuant to 35 USC § 325(d) in view of the fact that other overlapping petitions cover substantially the same grounds as proposed in the current IPR.

Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., IPR2014-00315, Paper 14 (July 8, 2014).

Unilever, Inc. v. The Procter & Gamble Co.IPR 2014-00506, Paper 17 (July 7, 2014).

Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00436, Paper 17 (June 19, 2014).

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19 (November 21, 2013).

ZTE Corp. v. ContentGuard Holdings Inc.IPR2013-00454, Paper 12 (September 25, 2013).

Ariosa Diagnostics v. ISIS Innovation Ltd., IPR2012-00022, Paper 55 (August 7, 2013).

Ariosa Diagnostics v. ISIS Innovation Ltd., IPR2012-00022, Paper 67 (August 29, 2013).

International Flavors & Fragrances Inc. v. U.S.IPR2013-00124, Paper 12 (May 20, 2014).

Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (June 11, 2013).

Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in IPR proceedings.

See also, generally, USPTO Listing of Informative Opinions