May 20, 2016
Authored and Edited by Jason E. Stach; Alex Kwan-Ho Chung, Ph.D.
On Tuesday, May 10, 2016, the PTAB designated the following five decisions as precedential, providing authority on various procedural issues including: criteria for additional discovery; the nature of service triggering the one-year time bar; the patentee’s burden to demonstrate the patentability of substitute claims; and an interpretation of § 312(a)(2).
In the Garmin and Bloomberg decisions, the Board discusses five factors deemed important in evaluating motions for additional discovery under the “interest of justice” standard in IPR and the “good cause” standard in CBM proceedings. The factors include demonstrating: (i) that the motion presents more than the mere possibility or a mere allegation that something useful will be discovered; (ii) that the party is not prematurely seeking the opposing party’s litigation positions and their underlying bases; (iii) that there is no reasonable ability to generate equivalent information by other means; (iv) that any instructions are easily understandable; and (v) that the requests are not overly burdensome to answer.
The Oracle decision interprets “served with a complaint” for purposes of triggering the one-year time bar set forth in 35 U.S.C. § 315(b). It concludes that dismissing an infringement suit without prejudice nullifies the effect of serving the complaint so it does not trigger the time bar.
The MasterImage 3D order provides guidance on a patent owner’s burden to show the patentability of substitute claims over the “prior art of record” and “prior art known to the patent owner.”
The Lumentum decision interprets 35 U.S.C. § 312(a)(2) as non-jurisdictional, noting that Board does not lose its jurisdiction over the proceeding the moment a petition no longer identifies “all real parties in interest.” Over the course of the trial, the real parties in interest may change, and the petitioner can notify the Board within 21 days of the change without loss of jurisdiction.
While some in the PTAB bar may take issue with some of these holdings, it appears that the Board will now apply these principles uniformly and practitioners may cite these decisions as binding precedent before other PTAB panels.
Copyright © 2016 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. Additional disclaimer information.
Hybrid Conference
2024 California Intellectual Property Law Institute
October 21-22,2024
San Francisco
Conference
2024 Licensing Executives Society USA – Canada Annual Meeting
October 20-23, 2024
New Orleans
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.