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ARTICLE · 07 OCTOBER 2019

PTAB Precedential Decision Recap

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The PTAB has been very active in designating decisions precedential and informative in 2019.

United StatesIntellectual Property
Matthew Johnson
Matthew Johnson
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The PTAB has been very active in designating decisions precedential and informative in 2019. Here's a recap of designations so far:

Real parties in interest, 35 U.S.C. §§ 312(a)(2), 322(a)(2)

Requirements of Petition, 35 U.S.C. §§ 312(a)(3)

  • Informative – Adaptics Ltd. v. Perfect Co., Case IPR2018-01596, Paper 20 (Mar. 6, 2019) [AIA §§ 312(a)(3), 314(a), deny institution – failure to identify grounds with particularity]

Institution, 35 U.S.C. § 314(a)

  • Precedential – Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00064, -00065, -00085, Paper 10 (May 1, 2019) [AIA § 314(a), deny institution – General Plastic factor 1 applies to joined Petitioner]
  • Precedential – Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00062, -00063, -00084, Paper 11 (Apr. 2, 2019) [deny institution – General Plastic factors apply to different Petitioner]
  • Informative – Adaptics Ltd. v. Perfect Co., Case IPR2018-01596, Paper 20 (Mar. 6, 2019) [AIA §§ 312(a)(3), 314(a), deny institution – failure to identify grounds with particularity]
  • Informative – Chevron Oronite Co. LLC v. Infineum USA L.P., Case IPR2018-00923, Paper 9 (Nov. 7, 2018) [insufficient number of proposed grounds/challenges to claims meet reasonable likelihood standard]
  • Informative – Deeper, UAB v. Vexilar, Inc., Case IPR2018-01310, Paper 7 (Jan. 24, 2019) [insufficient number of proposed grounds/challenges to claims meet reasonable likelihood standard]

Bar due to petitioner's action, 35 U.S.C. § 315(a)

Bar due to patent owner's action, 35 U.S.C. § 315(b)

  • Precedential – Infiltrator Water Techs., LLC, v. Presby Patent Trust, Case IPR2018-00224, Paper 25 (Oct. 1, 2018) [AIA § 315(b) – applying Click-to-Call to a complaint dismissed without prejudice for lack of personal jurisdiction]
  • Precedential – GoPro, Inc. v. 360Heros, Inc., Case IPR2018-01754, Paper 38 (Aug. 23, 2019) [AIA § 315(b), one-year time bar triggered after the service of a complaint, regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient]
  • Precedential – Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2017-01917, Paper 86 (Feb. 13, 2019) [AIA §§ 312(a)(2), 315(b), post-institution update to Mandatory Notices to add RPI]
  • Precedential – Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., Case IPR2017-00651, Paper 152 (Jan. 24, 2019) [AIA §§ 312(a)(2), 315(b), terminating proceeding where Petition failed to name time-barred RPI and privy

Joinder, 35 U.S.C. § 315(c)

Motions to amend, 35 U.S.C. § 316(d)

Oral argument, 37 C.F.R. § 42.70

Request for rehearing, 37 C.F.R. § 42.71(d)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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