Previous PTAB Opinions Designated Precedential

Yesterday, the Patent Trial & Appeal Board (PTAB) designated two older AIA trial decisions, and one recent decision, precedential. These three decisions follow last week’s Precedential Opinion Panel (POP) decision in Proppant Express Investments v. Oren Technologies, which held issue joinder was embraced by 35 U.S.C. § 315(c), but a matter of Board discretion.

Since the revision of its Standard Operating Procedure (SOP) for designating precedential and informative decisions (SOP2), it is expected that the Board will continue to expand upon the current number of precedential decisions.

As to the more recent of the decisions, in Amazon.com, Inc. v. Uniloc Luxembourg S.A., Case IPR2017-00948 (PTAB Jan. 18, 2019) (Paper 34) the Board designated precedential the determination that 35 U.S.C. § 311(b) does not preclude Petitioner from raising, or the Board from considering, other grounds of unpatentability, including § 101, as to substitute claims not yet part of a patent, in the context of a motion to amend. (here)

In the older decisions, K-40 Electronics, LLC v. Escort, Inc., Case IPR2013-00203 (PTAB May 21, 2014) (Paper 34) the Board designated precedential the factors that may be considered in determining whether to permit live testimony. (here)

Next, in DePuy Synthes Products, Inc. v. MEDIDEA, L.L.C., Case IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29) The Board designated precedential the determination that the testimony of an inventor at the oral hearing is considered new evidence, and not permitted, if a declaration from the inventor has not been previously provided. (here)

I would not interpret the designation of any of these decisions as especially meaningful. For example, the Board is not encouraging requests for live testimony by designating precedent on the topic. To my eye, this is just an attempt to provide binding guidance on a number of issues, with more to come.

Scott A. McKeown is an author of the Patents Post Grant