Rehearing an Institution Decision

The Supreme Court recently affirmed that a decision by the PTAB regarding institution of an inter partes review is “final and nonappealable.” Cuozzo Speed Tech. v. Lee, No. 15-466, slip op. at 7 (U.S. June 20, 2016); see 35 U.S.C. §314(d). Without the ability to appeal an institution decision, a dissatisfied party is often left to file a request for rehearing with the Board. 37 C.F.R. § 42.71(d). Continue reading “Rehearing an Institution Decision”

Lack of Precedent at PTAB Can Lead to Conflicting Panel Decisions

A recent decision at the PTAB highlights one of the difficulties faced by parties and practitioners before the Board: the potential for conflicting decisions in a forum where almost nothing is considered precedential.

Earlier this month an expanded panel re-visited the question of whether a Petitioner may join its own previously-instituted Petition for Inter Partes Review. Consistent with earlier decisions, this expanded panel concluded that so-called “issue joinder” (the same party joining new issues to an instituted petition) is permissible under 35 U.S.C. § 315(c). Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2015-00762 (PTAB October 5, 2015) (Paper 16). Continue reading “Lack of Precedent at PTAB Can Lead to Conflicting Panel Decisions”