Fildes & Outland, P.C.

The PTAB has continued to be active in designating decisions as precedential.

In Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC (IPR2018-00816), the PTAB has provided information and guidance related to the introduction of new evidence in a Request for Rehearing.  As stated in the Trial Practice Guide, “[e]vidence not already of record at the time of the decision will not be admitted absent a showing of good cause.”  The Board informs that a party may argue “good cause” by requesting a conference call with the Board prior to the filing of a rehearing request, or by arguing that “good cause” exists in the rehearing request itself.  Huawei did neither, and therefore the newly submitted exhibits were not admitted or considered.

In Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc. (IPR2017-00651), the Petition was dismissed and the proceeding was terminated because the petitioner Ventex failed to show that the Petition was not time barred pursuant to 35 U.S.C. 315(b).  A petitioner bears the burden to demonstrate that its petition is not time barred based on a complaint served on either a real party in interest or a privy more the one year before the petition is filed.  The PTAB analyzed both the real party in interest and privity claims, and found that the petition was time barred because Seirus was both a real party in interest and a privy of petitioner Ventex.  Also, Seirus was served a complaint alleging infringement of the patent-at-issue more than a year before the filing of the IPR petition.

In Proppant Express Investments, LLC v. Oren Techs., LLC (IPR2017-01917), the petitioner was allowed, after institution of the trial, to update its Mandatory Notices to name additional real parties in interest.  The Board may, in its discretion, permit a petitioner to amend its identification of real parties in interest after institution, while maintaining the original filing date of the petition.  The fact that none of the parties named in the updated notice would have been time barred under 35 U.S.C. 315(b) was a significant factor.  Other factors to consider include bad faith by the petitioner, prejudice to the patent owner caused by the delay, and gamesmanship by the petitioner.

In Adello Biologics LLC v. Amgen Inc. (PGR2019-00001), the petitioner was also allowed, before institution of a trial, to update its Mandatory Notices to name an additional real party in interest.  The Board may, in its discretion, permit a petitioner to amend its identification of real parties in interest, while maintaining the original filing date of the petition.

The precedential opinions may be accessed through the USPTO website at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/precedential-informative-decisions.

Further PTAB Precedential Opinions

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