PTAB Cases You Should Know

The Federal Circuit, Supreme Court, and PTAB have been addressing a number of big issues in 2017 and 2018. Here are the cases you should know.

Recent Decisions

Appeal of PTAB Institution Decisions

After years of decisions applying a hardline rule that the PTAB's decision whether or not to institute an IPR was not subject to appeal, the Federal Circuit held en banc, that the issue of whether a petitioner is time-barred from filing an IPR petition under 35 U.S.C. § 315(b) - the one year time bar after an infringement claim has been brought - can be appealed to the Federal Circuit. Wi-Fi One LLC v. Broadcom Corp., Nos. 15-1944, 15-1945, and 15-1946 (Fed. Cir. Jan. 8, 2018) (discussed here). The court determined that § 315(b) creates a condition precedent to the Director's authority to make an institution decision. This decision is expected to result in additional appellate challenges to other institution determinations that do not relate directly to the merits of the claims.

Amendment of Claims

After years of complaints that the burden placed on patent owners for motions to amend claims during post-grant proceedings was too high, the Federal Circuit held that the Board could not place the burden of persuasion with respect to the patentability of substitute claims on the patent owner. Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (discussed here and here). In response, the PTAB's Chief Administrative Patent Judge issued a memorandum providing guidance on motions to amend and stating that the board will determine whether substitute claims comply with 35 U.S.C. § 316(d) by a preponderance of the evidence based on the entirety of the record. Our summary of the guidance is provided here.

Institution of multiple petitions challenging the same patent

In an effort to conserve the Board's resources and prevent inequity to the patent owner, the Board set forth guidance for its use of discretion regarding when to institute when multiple petitions have been filed challenging the same patent. General Plastic Industrial Co. Ltd. v. Canon Kabushiki Kaisha, case numbers IPR2016-01357, IPR2016-01358, IPR2016-01359, IPR2016-01360, and IPR2016-01361 Paper 19 (Sept. 6, 2017). The case was decided by an expanded panel due to its exceptional importance, and the decision was designated precedential. The opinion outlines seven factors to be used as a baseline for making this determination. These factors include:

whether the same petitioner previously filed a petition directed to the same claims of the same patent; whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; whether at the time of filing of the second petition the petitioner already received the patent owner's preliminary response to the first petition or received the Board's decision on whether to institute review in the first petition; the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; the finite resources of the Board; and the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review...