March 20, 2019

Doug Robinson Interviewed by Law360 on Recent Precedential Decisions from the PTAB

St. Louis patent litigator Doug Robinson spoke to Law360 about the high number of decisions the Patent Trial and Appeal Board (PTAB) has deemed precedential since early March. With a number of changes, a new USPTO guidance, and even a new Precedential Opinion Panel affecting the PTAB in recent months, the five cases it deemed precedential will serve as a pathway for petitioners and patent owners to follow in future proceedings.

In Lectrosonics Inc. v. Zaxcom Inc., deemed precedential on March 7, the PTAB provided new guidance on motions to amend. While it covered several topics — including the burden of persuasion, the scope of the proposed claims and rules for page limits — its sum effect was clarifying that “petitioners can submit additional evidence when opposing a motion to amend, and patent owners can do the same with their reply,” according to Law360.

In the March 13 decision for Proppant Express Investments LLC  v. Oren Technologies LLC, the Precedential Opinion Panel gave its first-ever ruling in which it says a challenger is able to join its own petition for Inter Partes Review, although “only in limited circumstances.” One factor that may sway the panel’s opinion is the limiting IPR time bar. Any attempts that appear to “game the system,” however, will be blocked.

On March 18, the Inc. v. Uniloc Luxembourg SA ruling regarding motions to amend was made precedential. It essentially states that if a party files a motion to amend, the new claims are also open to subject matter eligibility challenges. As the board said in its decision, “The statutory provision providing a right to a motion to amend … does not prevent us from considering unpatentability under sections other than [anticipation and obviousness] with respect to substitute claims.”

Also on March 18, the decisions for both K-40 Electronics LLC v. Escort Inc. and DePuy Synthes Products Inc. v. MedIdea LLC were designated as precedential. The pair of decisions reinforce the convention that says inventors will not be allowed to testify before the PTAB unless they have a compelling reason to do so. Exceptions are more likely to be given to fact witness rather than expert witnesses, as was the case in K-40 Electronics LLC v. Escort Inc. Attempting to provide testimony without first providing declaration evidence will also be grounds for blocking a bid to testify.

In addition to the precedential cases, Ex Parte Smith was also deemed as “informative” on March 19. This decision applied the USPTO’s new patent eligibility framework which was put in place in January. In following the new guidance, the PTAB reversed an examiner’s rejection of an application for a hybrid trading system that was previously deemed patent ineligible.

As opposed to precedential opinions, which are binding for all PTAB panels, informative decisions reflect the PTAB’s “general consensus on recurring issues” but are not binding.

With so many decisions coming out in March, Robinson says there is no reason to expect the PTAB to slow down. “I suspect it’s not over,” he says. “I think there will be a flurry of precedent coming up, and maybe this is going to be a mechanism by which the PTAB seeks to give people what it views as concrete guidance on how these issues should proceed.”

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