Just this week, the U.S. Patent & Trademark Office’s Patent Trial and Appeal Board (“PTAB”) designated five opinions as “precedential.” This “precedential” designation is rarely bestowed – the PTAB’s website lists only 34 “precedential” opinions. These opinions are binding in all future PTAB proceedings unless superseded by subsequent, binding authority. “Precedential” opinions may be contrasted against non-binding “routine,” “representative,” and “informative” opinions.
Furthermore, acting Chief Administrative Patent Judge Nathan Kelley published a blog post reporting on a Patent Trial and Appeal Board Motion to Amend Study. Kelley’s post and the study note that the PTAB reviewed 118 motions to amend, granted (or granted-in-part) six of those motions, and denied the remainder. “Of those denied, including the denial portion of those granted-in-part, 22 were denied solely on procedural…, and 94 were denied after identifying specific grounds of patentability that the proposed amended claims did not satisfy.” Even with last year’s “quick fix” rule changes it appears that motions to amend are rarely filed, and rarely granted.
The following five opinions were designated “precedential.”
- Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013). This Decision on a Motion for Additional Discovery addresses “routine” discovery requests, “additional” discovery requests, and motions for “additional” discovery in inter partes review (“IPR”) proceedings.
- Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013). This Decision on a Motion for Additional Discovery issued in a covered business method (“CBM”) proceeding that, like post-grant review proceedings, evaluates requests for “additional” discovery under a “good cause” standard (not the “interests of justice” standard used in IPR proceedings).
- Oracle Corp. v. Click-to-Call Techs, LP, IPR2013-00312, Paper 26 (Oct. 30, 2013) (precedential only as to Section III.A). This Decision on Institution of Inter Partes Review addresses the interpretation of “served with a complaint” for purposes of triggering the one-year time bar for filing an IPR petition 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 further guidance concerning the patent owner’s burden to show an entitlement to substitute claims patentable over the relevant prior art.
- Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Paper 38) (Mar. 4, 2016). This Decision on a Motion to Termination interprets the requirement, set forth in 35 U.S.C. § 312(a)(2), that a petitioner identify all real parties in interest.
And, earlier this year, the PTAB designated as “precedential” two other opinions.
- LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (Sept. 17, 2015). This Decision on Institution of Inter Partes Review also addresses the interpretation of “served with a complaint” for purposes of triggering the one-year time bar for filing an IPR petition set forth in 35 U.S.C. § 315(b).
These recently-designated “precedential” opinions will shape PTAB jurisprudence as the forum continues to provide an administrative alternative to litigating the validity and patentability of issued claims in the U.S. district courts.