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”

Board’s Discretion Under § 325(d) Remains Rarely Used

One issue which we’ve been keeping an eye on is the Patent Trial and Appeal Board’s use of its discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review for petitions using “the same or substantially the same prior art or arguments previously [ ] presented to the Office.” (See our previous posts on the topic here and here.)

In an effort to better understand the Board’s use of § 325(d) we reviewed every institution decision issued by the Board in the last 15 months to see (1) whether a petition was opposed under this statutory provision and (2) whether institution was denied as a result. The results of this study, described in greater detail below, suggest that § 325(d) remains rarely used by the Board. That said, Petitioners still must account for this statutory provision by including different prior art or grounds of rejection in the petition, explaining those differences to the Board, and ensuring a proper petition is filed in the first instance to avoid a “second bite” rejection. Continue reading “Board’s Discretion Under § 325(d) Remains Rarely Used”

IPR Challenge Based on Applicant Admitted Prior Art May Fail to Comply with Statutory Requirements

A three-member panel at the Patent Trial and Appeal Board (PTAB) has held that an expert declaration which explains the significance of Applicant Admitted Prior Art (AAPA) is not “prior art consisting of patents or printed publications” as required by 35 U.S.C. § 311(b). Kingbright Elec. Co. et al. v. Cree, Inc., IPR2015-00741, Paper 8 (PTAB Aug. 20, 2015). Accordingly, the panel denied institution of an inter partes review (IPR) petition that asserted seven grounds of invalidity with each ground relying at least in part on such a declaration and AAPA. This decision has not been designated informative or representative.

Continue reading “IPR Challenge Based on Applicant Admitted Prior Art May Fail to Comply with Statutory Requirements”

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The opinions expressed on this blog are those of the author and are not to be construed as legal advice.

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