Informative

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To guide and inform the public about the Patent Trial and Appeal Board’s practice surrounding post-grant proceedings, the Board periodically designates certain of its decisions as precedential or informative.  As noted by the PTAB:

A precedential decision establishes binding authority concerning major policy or procedural issues, or other issues of exceptional importance, including constitutional questions, important issues regarding statutes, rules, and regulations, important issues regarding case law, or issues of broad applicability to the Board. Standard Operating Procedure 2, 2-3, 11.

An informative decision provides Board norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases. Standard Operating Procedure 2, 9.

Relatedly, the Patent Office uses a Precedential Opinion Panel “to decide issues of exceptional importance to the Patent Trial and Appeal Board (e.g., issues involving agency policy or procedure).”  That Panel is composed of the Director of the Patent Office, the Commissioner for Patents, and the Chief Judge of the PTAB.

Recently, the U.S. Patent and Trademark Office announced that it established two online portals, to facilitate submitting 1) requests to designate precedential and informative decisions, and 2) amicus positions regarding requests for Panel review.
Continue Reading PTAB Adds Online Public-Submission Forms

The Patent Trial and Appeal Board (“Board”) recently designated two decisions as informative regarding discretionary denials of institution: Apple Inc. v. Fintiv, Inc., Case IPR2020-00019, Paper 15 (May 13, 2020), and Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, Case IPR2019-01393, Paper 24 (June 16, 2020).  These decisions show how the Board applied the Fintiv factors established in its recent Precedential Order to determine whether co-pending district court litigation should result in a discretionary denial of institution under AIA 35 U.S.C. § 314(a).
Continue Reading New PTAB Informative Decisions: Applying the Fintiv Factors in View of Parallel District Court Litigation

On Thursday, June 11, 2020, the PTAB designated one decision as precedential and three decisions as informative, on issues including: 1) the statutory scope of confidential settlement agreements, 2) design patent ornamentality, 3) terminating a proceeding having a pending motion to amend, and 4) use of confidential information at a hearing.
Continue Reading PTAB Issues Precedential Decision to Clarify 35 U.S.C. § 317(b) Collateral Agreements, and Three Informative Decisions

The Patent Trial and Appeal Board (“the Board”) recently provided guidance to practitioners on its discretion to deny institution under 35 U.S.C. § 325(d) and § 314(a) by designating three decisions as informative or precedential.[1]  Under 35 U.S.C. § 325(d), the Board may deny institution of inter partes review (“IPR”) because “the same or substantially the same prior art or arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential), Oticon Med. AB v. Cochlear Ltd., IPR2019-00975, Paper 15 (PTAB Oct. 16, 2019) (precedential), and PUMA N. Am., Inc. v. NIKE, Inc., IPR2019-01042, Paper 10 (PTAB Oct. 31, 2019) (informative) all provide guidance related to § 325(d).  Under 35 U.S.C. § 314(a), the Board may deny institution as an exercise of its discretion in certain circumstances, such as when parallel proceedings are underway.  In Oticon, the Board also addressed the parallel proceedings issue under § 314(a).

In Advanced Bionics, the Board denied institution under § 325(d), set forth a two-part framework for applying § 325(d), and explained how the factors from Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”) fit into the two-part framework.

In Oticon, however, the Board refused to exercise its discretion under § 325(d) and instituted the proceeding over similar arguments by a patent owner. While it did not characterize the § 325(d) inquiry as a two-part analysis, and it grouped the Becton, Dickinson factors into three categories, the Board focused on the same two issues: (1) whether the same or substantially similar prior art and arguments were previously considered, and (2) whether the Patent Office erred in its prior assessment of the art. The Board also rejected a request to deny institution under § 314(a) and distinguished an earlier precedential ruling, NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, slip op. at 19–20 (PTAB Sept. 12, 2018) (Paper 8) (precedential) (“NHK”), in which institution was denied because of a parallel district court proceeding.

In PUMA, the Board denied institution under § 325(d) after analyzing the Becton, Dickinson factors and finding the same prior art was previously considered and the petitioner did not persuasively demonstrate the examiner materially erred in evaluating the prior art during prosecution.

This is a longer read, but worthwhile, given the importance of the issues.  As detailed in the following summaries, the rulings collectively show the fact-specific nature of the § 325(d) and § 314(a) inquiries. The Board will assess the prior-art teachings considered in prosecution and earlier Board proceedings, will compare those to the teachings asserted in the petition, will carefully compare the disclosures of supposedly duplicative prior art, and will assess the issues and progress of parallel district court cases. Litigants should be prepared for this level of scrutiny and establish the needed records on the prior art teachings and parallel district court cases.
Continue Reading Recent Precedential and Informative Decisions Clarify Standard for Discretionary Denials of Institution