Recent Decisions

Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082, -00084 (Apr. 25, 2018) (Paper 13)

Takeaway (1) (Informative): A motion to amend that proposes substitute claims (versus a motion to amend that simply cancels claims) will ordinarily be treated as contingent, meaning that the Board will normally consider a proposed substitute claim only if a preponderance of the evidence establishes that the patent claim it replaces is unpatentable.  “A patent owner should adopt a claim-by-claim approach to specifying the contingency of substitution, e.g., which claim for which claim and in what circumstance.”

Takeaway (2) (Informative): Petitioners have the burden of persuasion to show that any proposed substitute claim is unpatentable by a preponderance of the evidence. The Board itself also may justify a finding of unpatentability by reference to evidence of record in the proceeding, as it must do when a petitioner ceases to participate.  “Thus, the Board determines whether substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner.”

Takeaway (3) (Informative): Before considering the patentability of any substitute claims, the Board first must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121:

Facebook, Inc. v. Skky, LLC, Case CBM2016-00091 (Sept. 28, 2017) (Paper No. 12)

Takeaway (1) (Precedential): The Board treats disclaimed claims as if they never existed.  In deciding whether to institute review, the Board will not consider claims that the patent owner previously disclaimed (before the decision whether to institute review). 

Takeaway (2): Where a patent includes some claims that would be eligible for CBM review and others that would not, a patent owner might avoid CBM review by disclaiming those claims eligible for CBM review before the Board decides whether to institute.

Luv N’ Care, Ltd. v. McGinley, Case IPR2017-01216 (Sept. 18, 2017) (Paper 13)

Takeaway (1) (Informative): In order to avoid the one-year time bar, a petition must be complete before the bar date. To be complete, a petition must satisfy each of the following requirements: (1) the content of the petition complies with 37 C.F.R. § 42.104, (2) the fee to institute has been paid, see 37 C.F.R. §§ 42.15(a), 42.103(b), and (3) the petition and relevant documents have been served on the patent owner. 37 C.F.R. § 42.105(a).

Takeaway (2): Absent a showing of good cause, the Board will not allow a petitioner to obtain the benefit of the date on which the petitioner filed an incomplete petition.

Takeaway (3): Petitioners should make sure that they have sufficient funds in their Patent and Trademark Office deposit accounts at the time of filing a petition, and, if there are insufficient funds in the account at the time of filing, make a separate attempt to reinitiate payment immediately upon the addition of sufficient funds.

General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 thru -01361 (Sept. 9, 2017) (Paper No. 19)

Takeaway (1) (Precedential): The Board has broad discretion to deny “follow-on” petitions under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).  When determining whether to institute follow-on petitions, the Board should consider the seven NVIDIA factors.

Takeaway (2) (Informative): The Chief Judge may expand a panel on a “suggestion” from a judge, panel, or party in a post-grant review. The standard operating procedure (PTAB SOP 1, 3 (§ III.A)) exemplifies some of the reasons why the Chief Judge might decide to expand a panel, for example [t]he proceeding or AIA Review involves an issue of exceptional importance.”

Takeaway (3): When considering a request for rehearing, the Board reviews its decision for an abuse of discretion, which may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. The party requesting rehearing bears the burden of showing that the decision should be modified by identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply.