Recent Decisions

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.