PTAB Moves to Establish More Precedential Decisions

Yesterday, the Patent Trial & Appeal Board (PTAB) announced the designation of five, additional precedential decisions.

Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in IPR proceedings. Previously designated as informative, this decision has been treated as de facto precedent for quite some time.

Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in CBM proceedings. (Garmin for CBMs)

Oracle Corp. v. Click-to-Call Techs, LP, IPR2013-00312, Paper 26 (October 30, 2013) (precedential only as to Section III.A.) – This decision pertains to interpretation of “served with a complaint” for purposes of triggering the one-year time bar set forth in 35 U.S.C. § 315(b).  More specifically, this decision stands for the proposition that a dismissal of a prior law suit “without prejudice” prevents that suit from triggering the time bar of 315(b).  This has also been de facto precedent at the PTAB.

MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (July 15, 2015) – This order provides guidance on patent owner’s burden to show entitlement to substitute claims.  More specifically this decision defines “prior art of record” and “prior art known to the patentee” as used in the Idle Free decision, which outlines requirements for motions to amend.  Another decision that has been treated as de facto precedent.

Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Paper 38) (March 4, 2016) – This decision interprets 35 U.S.C. § 312(a)(2).  More specifically, it clarifies that the naming of real-party-in-interest is not a jurisdictional requirement, and that changes during a proceeding, especially prior to institution may be corrected.

With the addition of these decisions, there are now eight (8) precedential PTAB decisions corresponding to AIA trial practice, the other being:

LG Electronics, Inc. V. Mondis Tech, Ltd. IPR2015-00937 (Paper 8) (September 15, 2007) (Dismissal both with prejudice and without prejudice for some issues will trigger 315(b) bar to institution)
Westlake Services, LLC v. Credit Acceptance Corp IPR2014-01176 (Paper 28) (May 14, 2015) (325(e)(1) estoppel is claim-by-claim)
SecureBuy LLC v. CardinalCommerce Corp . CBM2014-00035 (Paper 12) April 25, 2014 (325(a)(1) bar to review after DJ action applies in CBM)