United States: PTAB Designates Five Opinions at Precedential

On May 9, 2016, the Patent Trial and Appeal Board ("the Board" or "PTAB") provided additional guidance to patent owners and potential petitioners by designating 5 opinions as precedential, increasing the number of precedential opinions from 3 to 8. The significance of the designation is that precedential opinions are binding on all members of the Board unless overcome by subsequent binding authority. In order for an opinion to be made precedential, a majority of the Board's voting members must agree to the designation and the Director of the U.S. Patent and Trademark Office must concur with the decision.

The newly designated opinions relate to procedural issues, including requests for additional discovery, amending claims during post-grant proceedings, rules related to identifying real parties in interest and the statutory time bar under 35 U.S.C. §315(b).

The following opinions were designated as precedential:

Garmin Int'l, Inc. et al. v. Cuozzo Speed Tech. LLC, Case IPR2012-00001, Paper 26, Decision on Motion for Additional Discovery (March 5, 2013). This opinion was previously designated as an "informative" opinion.  Garmin provides five factors that are to be considered by the PTAB in determining whether requested additional discovery meets the statutory standard of "necessary in the interest of justice." 35 U.S.C. § 316(a)(5).  Thus, a party seeking additional discovery should address these 5 factors in its request: 1) the party must show more than a possibility and mere allegation that something useful will be found (e.g., the party requesting discovery should already be in possession of evidence tending to show beyond speculation that something useful will be uncovered); 2) the party should not attempt to discern the other party's litigation positions and underlying basis for those positions under the pretext of discovery; 3) the party should not request information that it can reasonably figure out or assemble without the discovery request; 4) the questions or requests for additional discovery should be easily understandable; and 5) the requests should not be overly burdensome to answer; they should be "sensible and responsibly tailored according to genuine need".

Bloomberg, Inc. v. Markets-Alert PTY Ltd., CBM2013-00005, Paper 32, Decision on Motion for Additional Discovery (May 29, 2013). This opinion was previously designated as a "representative" decision. Bloomberg explains that the standard for additional discovery in a covered business method patent review (as well as post-grant reviews) is a "good cause" standard rather than the "interest of justice" standard used in inter partes reviews.  The good cause standard is slightly lower than the interest of justice of standard. For covered business method patent review, each of the five Garmin factors is slightly modified to determine whether the requested additional discovery is necessary for good cause.

Oracle Corp. v. Click-to-Call Technologies LP, IPR2013-00312, Paper26, Decision on Institution of Inter Partes Review (Oct. 30, 2013) (precedential only as to Section III.A). Oracle addresses the statutory bar pursuant to 35 U.S.C. § 315(b).  Under 35 U.S.C. § 315(b), an inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. Oracle clarified that that the dismissal of an infringement lawsuit nullifies the effect of the service of the complaint for purposes of starting the one year period under 35 U.S.C. § 315(b).

Masterimage 3D, Inc. v. Reald Inc., IPR2015-00040, Paper 42, Order on Conduct of Proceedings (Jul. 15, 2015). This opinion was previously designated as a "representative" opinion.  In Masterimage, the Board clarified statements made in previous opinions related to amending claims during post-grant proceedings.[1] In Masterimage, the Board explained that "prior art of record" refers to any material art: a) in the prosecution history of the patent, b) of record in the current proceeding, including art asserted in grounds on which the Board did not institute, and c) of record in any other proceeding before the Office involving the patent.  Further, the Board explained that "prior art known to the patent owner" should be understood as material prior art that the Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend, with the initial emphasis being placed on added limitations. Lastly, the Board explained that while the Patent Owner maintains the ultimate burden of persuasion as to patentability of substitute claims, the burden of production shifts from the Patent Owner to the Petitioner once the Patent Owner sets forth a prima facie case of patentability of the substitute claims.  The Petitioner then has to either explain why the Patent Owner did not make a prima facie case of patentability or rebut the prima facie case.

Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Pap. 38, Decision on Motion to Terminate (Mar. 4, 2016). This opinion relates to Petitioner's failure to identify a real party-in-interest as required under 35 U.S.C. §312(a)(2).  After the decision to institute, the Petitioner changed its name but failed to provide notice within 21 days of the change as required under the mandatory notice requirements. The Board found that a lapse in compliance with 35 U.S.C. § 312(a) does not deprive the Board of jurisdiction over the proceeding or from permitting such lapses to be rectified.  

The three opinions previously designated as precedential are SecureBuy, LLC v. Cardinal Commerce Corp., CBM2014-00035, Paper 12, Decision Denying Institution of Covered Business Method Patent Review (April 25, 2014); Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28, Order on Patent Owner's Motion to Terminate (May 14, 2015); and LG Electronics v. Mondis Technology, Ltd., IPR2015-00937, Paper 8, Decision Denying Institution of Inter Partes Review (Sept. 17, 2015).

[1] In Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-00027, Paper 26 (June 11, 2013) (informative), the Board stated the following:

The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner.

Id. at 7 (emphasis added).

This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions