PTAB Designates Five Decisions as Informative

Recently, the PTAB designated five decisions as informative. Three of the decisions provide guidance on practice and procedure in inter partes review proceedings. The two remaining decisions stem from ex parte appeals. The decisions are summarized below.

Colas Sols. Inc. v. Blacklidge Emulsions, Inc., IPR2018-00242, Paper 9 (PTAB Feb. 27, 2018) – holding that 35 U.S.C. § 315(a)(1) bars institution of an inter partes review where a petitioner files a declaratory judgment action challenging the same patent before filing a petition.  The filing of a motion for joinder does not except a petition from the statutory bar of § 315(a)(1). The time bar of § 315(b) specifically states that it “shall not apply to a request for joinder under subsection (c),” whereas § 315(a)(1) does not include similar language.

Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 55 (PTAB Aug. 7, 2013) – applying 37 C.F.R. § 42.53, which governs the taking of testimony in trail proceedings, and setting forth 12 general guidelines for taking a deposition in a foreign language.

Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 (PTAB Jan. 19, 2018) – applying 37 C.F.R. § 42.54(a), which states that “[t]he Board may, for good cause, issue an order to protect a party . . . from disclosing confidential information” and setting forth guidance as to how a party can establish “good cause” to seal information. In particular, a movant to seal must demonstrate that: “(1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.

Ex parte Ditzik, 2018-000087 (PTAB Mar. 2, 2018) – holding that the Examiner’s invocation of issue preclusion was not in error based on Appellant’s arguments. Appellant’s unpersuasive arguments included (A) the standards of proof differ between a district court and the PTO; (B) the new claims differ from the invalidated claims; (C) Appellant provides new evidence; (D) incorrect trial testimony led to the district court and Federal Circuit reaching the wrong result; (E) Appellant did not have a full and fair opportunity to litigate; (F) the district court’s judgments are not final; (G) the PTO was not a party to the prior litigations; and (H) the Board should use its discretion to provide expert guidance.

Ex parte Jung, 2016-008290 (PTAB Mar. 22, 2017) – applying the Federal Circuit’s decision in SuperGuide Corp v. DirecTV Enters.,Inc., 358 F.3d 870, 885­–86 (Fed. Cir. 2004), which explains that there is a difference between a list separated by “and” and “or,” where the plain and ordinary meaning of “at least one of A and B” is the conjunctive phrase requiring the presence of both A and B. The Examiner can rebut the plain and ordinary meaning by providing the requisite supporting analysis that demonstrates that the claims, specification, or prosecution history necessitates a broader meaning.

The PTAB’s Designations for Opinions document explains that while informative decisions are not binding authority, informative decisions “provide the Board’s general consensus on recurring issues and guidance to examiners, appellants, patent owners, or petitioners in areas where parties routinely misapply the law. An informative opinion also may provide guidance in an underdeveloped or emerging area of law, where the Board wants to wait to see how the cases develop before considering a precedential opinion.”

The above decisions together with other decisions designated by the PTAB as precedential and informative can be found at the PTAB’s Precedential and Informative Decisions page.

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