United States: Ten Key Board Decisions In 2015 – Part One

As of December 31, 2015, the PTAB had reached a final disposition on 2,749 petitions for inter partes review (IPR), post-grant review of a covered business method (CBM), or post-grant review (PGR). Of that number, roughly half (1342) resulted in institution, of which 817 resulted in a final written decision. This two-part series will provide a summary of what were the most important, or at least most interesting, decisions of 2015.

1.) Zerto, Inc. v. EMC Corp., Case IPR2014-01254, Paper 32 (Feb. 12, 2015)

This decision is important for its explanation of the factors that support finding that an entity is a real-party-in-interest that must be named in a petition. In this case, the PTAB denied institution of an IPR filed by Zerto, Inc. because it believed that a real party-in-interest (Zerto Ltd.) was omitted. The PTAB cited the existence of a parent-wholly-owned-subsidiary relationship between the two entities, an overlap in the Board of Directors, a lack of distinction between the two on a website, and commingled financial reports as relevant factors. Other factors have been identified in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper 88 and Galderma S.A. v. Allergan Industrie, SAS, IPR2014-01422, Paper 14.

2.) Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, Paper 28 (Feb. 12, 2015)

In this case, an Expanded Panel held that § 315(c) does not preclude joinder of the same petitioner (here, Target) and that it allows for issue joinder even though the statutory language does not specifically address it. The Expanded Panel found support for these conclusions in statements made by Senator Kyl in the legislative history where he suggests joinder of not only parties but also issues. This decision overruled a contrary finding by the original panel and provides support for the PTAB to grant joinder and allow a time-barred petitioner to have a second-bite at the apple, i.e., to join its own prior instituted proceeding and raise issues that were not raised in the prior proceeding.

3.) AOL Inc. v. Coho Licensing LLC, IPR2014-00771, Paper 12 (Mar. 24, 2015)

This case is a must-read for those considering requesting rehearing. Factors the PTAB will consider include: whether the issue conflicts with a reviewing court or precedential Board decision, or whether the issue raises a conflicting legal interpretation of a statue/regulation. The case also comments that the presence of a dissent in an institution decision does not, by itself, warrant panel expansion. And, not surprisingly, any request for rehearing may not include new arguments.

4.) Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (May 14, 2015)

Westlake is one of two Board decisions made precedential by the Board in 2015, bringing the number of precedential Board decisions to three. Westlake holds that estoppel is applied on a "claim-by-claim basis" per §325(e)(1) and §328(a). Therefore, non-instituted claims and claims not the subject of a final written decision are fair game for a second petition, even if the PTAB can deny the second petition using its discretion under §325(d). For more on estoppel, see Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8, which applied § 315(e)(1) estoppel when the Petitioner "could have raised" the combination of prior art in first petition.

5.) American Simmental Assoc. v. Leachman Cattle of Colorado, LLC, PGR2015-00003, Paper 19 (June 19, 2015)

This decision is important as it represents the first institution of a post-grant review (PGR). Petitioner challenged the claims under §§101, 102 and 103. The Board found it more likely than not that Petitioners would prevail on the ground that the challenged claims were patent-ineligible. PGR was also instituted on the ground that the claims are more likely than not obvious over the cited prior art. Oral argument is scheduled for March 2016, and we will likely see the first decision in a PGR by summer 2016. This case is also worth watching because the Patent Owner filed a Contingent Motion to Amend.

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