PTAB Identifies Five New Decisions as Precedential

On May 10th, the PTAB identified five trial decisions as precedential, bringing the total number of IPR/CBM precedential decisions to eight.  The newly added decisions are well known decisions that active PTAB practitioners will recognize and have likely already been citing to.  Now, parties can cite to these decisions with full confidence that they represent official Board policy.  The PTAB precedential decisions now include:

• Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013) – Previously labeled as an informative decision, the Garmin decision highlights the five factors that the Board will focus one when deciding whether to grant a motion for additional discovery on an issue.  Specifically, the Board will look to: (1) the likelihood that something useful will be uncovered (i.e., that there is more than a possibility or a mere allegation); (2) whether the discovery request is really just an attempt to gain intelligence on the opponent’s litigation positions; (3) whether the requester has the ability to generate equivalent information by other means; (4) whether the proposed request’s instructions are easy to understand; and (5) whether the request is unduly burdensome.  The Garmin decision can be accessed at: Garmin Decision

• Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013) – Similar to the Garmin decision, the Bloomberg opinion deals with requests for additional discovery under the “interests of justice” standard, which is applied in CBM proceedings, compared to the “good cause” standard applied to IPR discovery requests.  The Board states that the five Garmin factors are still helpful in determining whether discovery requests may be granted in a CBM trial, with slight variations to each factor to account for the higher required showing.  The Bloomberg decision can be accessed at: Bloomberg Decision

• Oracle Corp. v. Click-to-Call Techs, LP, IPR2013-00312, Paper 26 (October 30, 2013) (precedential only as to Section III.A.) – The Oracle decision reviews the meaning of the term “served with a complaint” as that term is used in describing the one-year bar for filing a petition for IPR review.  Specifically, Oracle considers whether a law suit that was dismissed without prejudice counts when determining whether or not a petitioner is barred.  The Oracle decision states that a dismissal without prejudice puts the parties in the same position where they were pre-suit and that the dismissed case does not count in calculating the 35 U.S.C. § 315(b) one year bar.  The Oracle decision can be accessed at: Oracle Decision

• MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (July 15, 2015) – The MasterImage decision discussions issues with regard to a patent owner’s burden in presenting a motion to amend in a PTAB trial.  Prior decisions had dictated that the patent owner needs to show a patentable distinction over [1] prior art of record; and [2] prior art known to the patent owner.  The MasterImage decision clarified that prior art of record means (a.) any material art in the prosecution history of the patent; (b.) any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and (c.) any material art of record in any other proceeding before the Office involving the patent.  The MasterImage decision further clarified that “prior art known to the patent owner” means no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11.  The MasterImage decision can be accessed at: MasterImage Decision

• Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Paper 38) (March 4, 2016) – The Lumentum decision clarifies that the 35 U.S.C. § 312(a)(2) requirement that a petitioner name all real parties in interest is not a jurisdictional requirement.  Thus, an error in naming real parties in interest when filing a petition is not necessarily fatal to a petitioner’s case.  The Board is free to use their discretion to allow a petitioner to amend its notation of real parties in interest upon request where no deceptive intent is detected by the Board.  The Lumentum decision can be accessed at: Lumentum Decision

By: Matt Johnson (Jones Day Bio)