Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by§314(d).”

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Original Post: The Patent Trial and Appeal Board recently designated five opinions as “precedential.” Each of these opinions addresses procedural aspects of AIA proceedings, including requests for additional discovery, the one-year time period for filing a petition, amending claims, and requirements for PTAB consideration of a petition. A summary of each opinion follows.

By designating these opinions as precedential, the PTAB has provided a better procedural roadmap for parties moving forward.

In Garmin Int’l v. Cuozzo Speed Techs LLC, Case IPR2012-00001, Paper No. 26 (March 5, 2013), a case frequently cited in PTAB decisions, the PTAB discusses the five factors to be considered in evaluating motions for additional discovery in IPR proceedings. The opinion focuses on the factors that are to be considered when requesting additional discovery that is “necessary in the interest of justice.” In order to show that a request for additional discover is necessary in the interest of justice, the PTAB looks to five factors to be considered:

1. whether there is more than a possibility and mere allegation of finding something useful from the requested information;
2. whether the request is merely asking for the other party’s litigation positions and underlying basis therefore;
3. the ability of the requester to generate equivalent information by other means;
4. whether the instructions are easily understandable; and
5. whether the request is overly burdensome to answer.

The PTAB focused the majority of its opinion on the first factor, emphasizing that “the requester … should already be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered. ‘Useful’ … does not mean merely ‘relevant’ and/or ‘admissible…. ‘useful’ means favorable in substantive value to a contention of the party moving for discovery.” Garmin, at 7. Considering these factors, the PTAB found that the motion for additional discovery did not meet the standard of being “necessary in the interest of justice,” and denied all of the Cuozzo’s requested additional discovery.

In Bloomberg, Inc. v. Markets-Alert Pty, Ltd., Case CBM2013-00005, Paper No. 32 (May 29, 2013), the PTAB discusses the factors considered in evaluating motions for additional discovery relative to CBM proceedings. the PTAB cites to and lists out the same five factors applied in Garmin. In applying the five-factor test, the PTAB granted one request because the requested additional discovery was “specific and tailored narrowly, seeking information from one individual that is related to a single declaration on the issues raised by Bloomberg [the opposing party] in its petition.” Id. at 6.

In contrast, requests for additional known and unapplied prior art and other considered information were not granted because the requested information was not relevant to the asserted grounds of unpatentability and was merely cumulative to prior art already submitted. The PTAB explained that the petitioner is not required to cite cumulative prior art and does not need to disclose why it chose to disclose some prior art, but not other prior art. Further, the PTAB considered the request to be too broad because it would cover information possessed by every present and former employee and any other person acting on behalf of Bloomberg. Thus, the PTAB considered the proffered reasons to be “highly speculative” and did not “provide sufficient factual reason to demonstrate that something ‘useful’ will be uncovered.” Id. at 7.

Additional requests were considered to be “highly speculative and not meaningful” in that the requests asserted vague factual allegations without pointing specific factual reason or credible evidence, and also applied to an overly broad group of potential persons. These requests were also denied for failing to demonstrate that the additional requested discover was “necessary for good cause.” Id. at 10.

Oracle Corp. v. Click-to-Call Techs, LP, Case IPR2013-00312, Paper No. 26 (October 30, 2013) (precedential only as to Section III.A) pertains to interpretation of being “served with a complaint” for purposes of triggering the one-year time bar set forth in 35 U.S.C. § 315(b). Here, an infringement suit based on the same patent, and which was brought against a predecessor in interest to the current petitioner several years prior to the current petition, had been dismissed without prejudice pursuant to a joint stipulation between the parties. The PTAB held that, under Federal Circuit precedent, such action leaves the parties as though the action had never been brought, which “nullifies the effect of the service of the complaint.” Oracle, at 17. As a consequence, the PTAB concluded that the previous service did not act as a bar to the petitioner from pursing the IPR of the patent.

MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040, Paper No. 42 (July 15, 2015) (previously reported here) provides guidance relative to a patent owner’s burden to show entitlement to substitute claims. As set out in Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-00027, Paper No. 26 (PTAB June 11, 2013), the burden is on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. In this opinion, the PTAB further explains that the “prior art of record” enunciated in Idle Free refers to: 1) any material art in the prosecution history of the patent; 2) any material art of record in the current proceeding, including art asserted in grounds on which the PTAB did not institute review; and 3) any material art of record in any other proceeding before the PTO that involves the patent. MasterImage, at 2. The PTAB also explains that “prior art known to the patent owner” refers to no more than the material prior art that patent owner makes of record in the proceeding pursuant to its duty of candor and good faith under 37 C.F.R. § 42.11, in light of the motion to amend the claims. Id. at 3. With regard to the duty of disclosure, the PTAB explains that the patent owner should place initial emphasis on the added limitations of the amendment, and that information about the added limitation can still be material even if it does not include all of the rest of the claim limitations. Id. at 3. In the end, the PTAB re-emphasized that, “the ultimate burden of persuasion remains with patent owner, the movant, to demonstrate the patentability of the amended claims.” Id. at 4.

Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, Paper No. 38 (March 4, 2016) interprets the requirements of 35 U.S.C. § 312(a)(2), which states that a petition for IPR may be considered only if the petition identifies all real parties in interest. In this case, there was no dispute that the original petition correctly named all of the original parties in interest. However, due to internal business reorganizations of the petitioner subsequent to filing the petition, the real party in interest to the petition changed from the original filer to Lumentum Holdings. The petitioner requested a motion to re-caption the proceeding under the name of Lumentum Holdings to reflect the name change, which the PTAB granted without opposition from the patent owner. Thereafter, however, the patent owner moved that the proceedings be terminated because the petitioner failed to meet the requirements of § 312(a)(2) based on the change in the real parties in interest.

Rejecting the patent owner’s arguments, the PTAB held that § 312 (a) is not a jurisdictional limitation, but merely sets forth requirements that must be satisfied for the PTAB to consider a petition. Therefore, the PTAB reasoned, a lapse in compliance with those requirements does not deprive the PTAB of jurisdiction over the proceeding or preclude the PTAB from permitting the laps to be rectified. Based on this analysis, the PTAB denied the patent owner’s motion to terminate the proceedings.

With these five new designations, the PTAB has now designated eight PTAB trial decisions as precedential. By designating these opinions as precedential, the PTAB has provided a better procedural roadmap for parties moving forward.