ARTICLE · 06 JULY 2016

PTAB Provides Procedural Guidance, Designates Five Opinions As Precedential

McDermott Will & Emery

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The PTAB upgraded Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, Case No. IPR2012-00001 (PTAB, Mar. 5, 2013) (Lee, APJ) from informative to precedential.

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Zachary Getzelman

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On May 10, 2016, the Patent Trial and Appeal Board (PTAB or Board) designated five post-grant trial decisions as precedential, bring the total number of precedential decisions in inter partes review (IPR) and covered business method (CBM) proceedings to eight. Of the five decisions, two address additional discovery and the remaining three address, respectively, the one-year time period for filing a petition, the amendment of claims and the requirements for PTAB consideration of a petition. A summary of the holdings follows.

The PTAB upgraded Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, Case No. IPR2012-00001 (PTAB, Mar. 5, 2013) (Lee, APJ) from informative to precedential. In the decision, the PTAB identified five factors that it considers when deciding whether additional discovery is "necessary in the interest of justice." The factors include the following:

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