PTAB Precedent

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Fintiv Not a Single Step Framework

USPTO Director Vidal has issued a number of sua sponte Director decisions since her arrival. I haven’t bothered discussing them here as the majority are directed to rather unique 314(a) fact patterns that are unlikely to repeat going forward.

Today, in Commscope Technologies LLC v. Dali Wireless the Director issued her most recent decision on 314(a) practices. This decision, while similar in character to the previous decisions, shows the Director’s interest in assuring that her 314(a) framework is correctly followed.…

Continue Reading Director Wants Full Fintiv Analysis from PTAB

PTAB Designates Two Older Decisions as Precedential, Updates Hearing Rooms/Notices

The Patent Trial & Appeal Board (PTAB) has designated two more decisions precedential. The first addresses the 315(b) fling deadline, while the other pre-institution statutory disclaimer.

In addition to expanding precedent, the Board has also expanded hearing room space and options.
Continue Reading PTAB Adds Precedent & Hearing Room Features

New Decisions Provide Guidance on Discretionary Denials

The Patent Trial & Appeal Board (PTAB) has been steadily rolling out new precedent since establishing it Precedential Opinion Panel (POP). Last Friday a few more decisions were added to the growing pile. The newest decisions: two precedential and one informative serve to clarify 325(d) and 314(a) considerations, while the third informative decision warns against excessive and voluminous prior art presentations.
Continue Reading PTAB Continues to Roll Out Precedent

New Chief & Deputy Chief to Speak Thursday

The Patent Trial & Appeal Board (PTAB) is hosting a Boardside Chat webinar this Thursday, April 4th from noon to 1pm(EST). The webinar will introduce new Chief Judge Scott Boalick and Deputy Chief Judge Jackie Bonilla. The judges will discuss recent precedential and informative decisions issued by…

Previous PTAB Opinions Designated Precedential

Yesterday, the Patent Trial & Appeal Board (PTAB) designated two older AIA trial decisions, and one recent decision, precedential. These three decisions follow last week’s Precedential Opinion Panel (POP) decision in Proppant Express Investments v. Oren Technologies, which held issue joinder was embraced by 35 U.S.C. § 315(c), but a matter of Board discretion.

Since the revision of its Standard Operating Procedure (SOP) for designating precedential and informative decisions (SOP2), it is expected that the Board will continue to expand upon the current number of precedential decisions.
Continue Reading PTAB Ramps Up Issuance of AIA Trial Precedent

Issue Joinder Debate Comes Full Circle

As previously discussed, the Patent Trial & Appeal Board’s (PTAB) new Precedential Opinion Panel (POP) has considered its first case in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)

The POP reversed the earlier (divided) panel decision in Proppant Express (which conflicted with the earlier consensus of Target Corp. v. Destination Maternity), holding that 35 U.S.C. § 315(c) permits issue joinder. More specifically, the POP held that 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding (here).

That is, we are right back where we started in Target.
Continue Reading New PTAB Precedent: Issue Joinder is Discretionary

PTAB Updates Amendment Precedent

Today, the Patent Trial & Appeal Board (PTAB) designated Lectrosonics, Inc. v. Zaxcom, Inc, (IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) precedential as to the agency’s interpretation of 35 U.S.C § 316(d), amendment requirements and burden.

The Order provides guidance and information regarding statutory and regulatory requirements for a motion…