PTAB Round-Up: Record Filing in January, Federal Circuit’s Phigenix Standing Ruling, Denial of Review Decisions, District Court Estoppel

In its article summarizing noteworthy Patent Trial and Appeal Board (PTAB) decisions in January 2016, Managing Intellectual Property (MIP) referenced Finnegan's AIA Blog. MIP noted decisions that involved: declining institution of a covered business method (CBM) petition because the petitioners used the same exact combination of reference that had been applied by the USPTO examiner, and also introduced a new reference not previously cited during prosecution as a means to demonstrate the unpatentability of the patent; sanctions against the petitioner for failing to comply with rules governing mandatory notices in IPR proceedings; and a petitioner's reliance on exhibits downloaded from the Wayback Machine as prior art. Finnegan said, "The significance of these PTAB decisions is not understated. Before filing a petition relying on previously presented prior art and arguments, petitioners should explicitly articulate the clear errors in the original prosecution or show that the prior art at issue was only cursorily considered. Without such analysis, petitioners run the risk of having the petition denied under § 325(d), thus redounding to the benefit of patent owners."