PTAB Announces New Informative Decisions

The Patent Trial and Appeal Board (PTAB) has designated the recent decision granting a request for additional discovery in Arris Group, Inc. v. C-Cation Techs., LLC, IPR2015-00635 (Paper 10) (PTAB May 1, 2015) as an informative decision. The decision grants Patent Owner's Motion for Additional Discovery on issues of privity pre-institution. The decision provides guidance on the types of reasonable and narrowly tailored requests for additional discovery concerning privity and real party-in-interest issues that the Board frequently grants. The decision can be found (here).

(Decision itself does not provide much feedback on narrowly tailored requests. Instead, it highlights the importance of uncovering potential "smoking guns" through external efforts before seeking discovery at the PTAB).

As to CBM estoppel, a new decision is provided to clarify the application of estoppel under 35 USC 325(e)(1) in Westlake Services LLC v. Credit Acceptance Corp., CBM2014-00176 (Paper 28) (PTAB May 14, 2015). In this decision, the Board held that estoppel is applied on a claim-by-claim basis. "By its terms, estoppel is invoked under Section 325(e)(1) as to 'a claim in a patent' that 'results in a final written decision under' 35 USC 328(a)." The decision declines to terminate the present CBM patent review, because the Final Written Decision in a prior CBM patent review in fact only ruled upon the patentability of claims not at issue in the present CBM patent review. In the prior CBM, the Board declined to institute review of the claims before the Board in the present CBM patent review. Because these claims did not result in a Final Written Decision under Section 328(a), the panel held that estoppel under Section 325(e)(1) does not apply to those claims. The decision can be found (here).  

(This decision has a unique set of circumstances. As alluded to in this decision, petitioners seeking to re-challenge claims missed in a first institution are typically denied under 325(d). For that reason, this decision is mostly academic).