New Guidance for Statutory Bars, Foreign Depositions & Confidentiality

Earlier this week, the Patent Trial & Appeal Board (PTAB) designated several IPR decisions as “informative.” As a reminder, an “informative” opinion, while not binding PTAB authority, illustrates norms of Board decision-making for the public, the patent examining corps, and future Board panels. Informative opinions may explain best practices, address recurring problems, identify developing areas of the law, exemplify types of decisions under-represented in commercial case reporting services, or report cases of public interest.

The first decision relates to the statutory bar of § 315(a)(1) (DJ of invalidity)

Colas Sols. Inc. v. Blacklidge Emulsions, Inc.,., Case IPR2018-00242, Paper 9 (Feb. 27, 2018) – holding that 35 U.S.C. § 315(a)(1) bars institution of an inter partes review where a petitioner files a declaratory judgment action challenging the same patent before filing a petition.  The filing of a motion for joinder does not except a petition from the statutory bar of § 315(a)(1). The time bar of § 315(b) specifically states that it “shall not apply to a request for joinder under subsection (c),” whereas § 315(a)(1) does not include similar language.

The second decision outlines requirements for taking foreign depositions.

Ariosa Diagnostics v. Isis Innovation Ltd., Case IPR2012-00022, Paper 55 (Aug. 7, 2013) – applying 37 C.F.R. § 42.53, which governs the taking of testimony in trail proceedings, and setting forth 12 general guidelines for taking a deposition in a foreign language.

The final decision relates to protection of confidential information.

Argentum Pharm. LLC v. Alcon Research, Ltd., Case IPR2017-01053, Paper 27 (Jan. 19, 2018) – applying 37 C.F.R. § 42.54(a), which states that “[t]he Board may, for good cause, issue an order to protect a party . . . from disclosing confidential information” and setting forth guidance as to how a party can establish “good cause” to seal information. In particular, a movant to seal must demonstrate that: “(1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.

An additional prosecution decision was also designated informative dealing with collateral estoppel, Ex parte Ditzik, 2018-000087 (Mar. 2, 2018) – holding that the Examiner’s invocation of issue preclusion was not in error based on Appellant’s arguments. However, the usefulness of this decision may be limited by its unique facts.