United States: PTAB Designates Five Opinions As 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).

Contact Us

Additional information about post-grant proceedings can be found on our Post-Grant Patent practice group page.

[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.

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