Takeaway: The statutory provision that sets forth the requirement to identify all real parties-in-interest in an IPR petition, 35 U.S.C. §312(a)(2), is not jurisdictional in nature. Failing to comply with this requirement thus does not deprive the Board of jurisdiction to hear a case.
Takeaway: A “hybrid” dismissal of a claim of infringement of a patent (dismissal with prejudice for some aspects and without prejudice for other aspects) does not reset the clock for the § 315(b) one-year time bar
Takeaway (1): In a Motion to Amend, the burden is on the patent owner to show patentable distinction over the prior art of record, where “prior art of record” refers to: (a) any material art in the prosecution history of the patent, (b) any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review, and (c) any material art of record in any other proceeding before the Office involving the patent.
Takeaway (2): In a Motion to Amend, the burden is on the patent owner to also show patentable distinction over prior art known to the patent owner, where “prior art known to the patent owner” refers to no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.
Takeaway (3): In a Motion to Amend, once the patent owner has set forth a prima facie case of patentability of narrower substitute claims over the prior art of record, the burden of production shifts to Petitioner.
Takeaway: The Board applies final written decision estoppel on a claim-by-claim basis; estoppel under § 325(e) (or § 315(e)) does not apply to claims that are challenged in a petition but denied institution.
37 C.F.R. § 42.73(a), which provides that “[a] judgment, except in the case of a termination, disposes of all issues that were, or by motion reasonably could have been, raised and decided” relates to the effect of a judgment in the particular proceedings in which the judgment is rendered but does not apply to other proceedings (even proceedings involving the same parties)
Takeaway (2): Res judicata does not apply to bar a patent owner from reasserting an issue/”defense” (e.g., § 315(b) one-year time bar) that the patent owner previously asserted unsuccessfully in the context of prior IPR proceedings involving the same petitioner and patent where the claims challenged in the IPR petition at issue were not part of the prior IPR proceedings and the petition at issue is based on different grounds (because the subsequent IPR would not satisfy the third prong of the res judicata test – “the second claim is based on the same set of transactional facts as the first.”)
Takeaway (3): The Board might grant discovery of relevant indemnification agreements in connection with a patent owner’s argument that a petition is barred under § 315(b) due to privity.