PTO Designates New Precedential Opinions on Additional Discovery, One-Year Time Bar, Substitute Claims, and Interpretation of § 312(a)(2)

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).

• Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013)
• Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013)
• Oracle Corp. v. Click-to-Call Techs, LP, IPR2013-00312, Paper 26 (October 30, 2013) (precedential only as to Section III.A.)
• MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (July 15, 2015)
• Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 (March 4, 2016)

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.