Fildes & Outland, P.C.

PTAB Precedential Opinions

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The PTAB recently designated a handful of decisions as precedential.

In Lectrosonics, Inc. v. Zaxcom, Inc. (IPR2018-01129), the PTAB provided information and guidance related to the filing of a motion to amend under 35 U.S.C. 316(d) in an inter partes review proceeding, including the contingency of motions to amend, the burden of persuasion, the number of substitute claims, how the amendment(s) should respond to a ground of unpatentability, the scope of substitute amended claims, the requirement for a claim listing, default page limits, evidence, and the duty of candor.

In Proppant Express Investments, LLC v. Oren Techs., LLC (IPR2018-00914) involving the issue of joinder, the PTAB concluded that 35 U.S.C. 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding.  The PTAB also concluded that the existence of a time bar under 35 U.S.C. 315(b) is one of several factors that may be considered when exercising the Board’s discretion under Section 315(c).

In K-40 Electronics, LLC v. Escort, Inc. (IPR2013-00203), the PTAB provided guidance regarding the limited circumstances in which live testimony is permitted at an oral hearing, such as to cross-examine a witness and/or when the demeanor of a witness is critical to assessing credibility.  The determination to allow live testimony during oral arguments is to be made on a case-by-case basis.  Factors to consider include the importance of the witness’s testimony to the case, i.e., whether it may be case-dispositive, and the type of witness (e.g., fact witness or expert witness).

In DePuy Synthes Products, Inc. v. Medidea, L.L.C. (IPR2018-00315), the PTAB denied the patent owner’s request to present live testimony of the inventor at oral hearing.  The inventor had not provided any declaration evidence in the proceeding, and was not listed as a counsel of record.  Therefore, the PTAB determined that any testimony presented by the inventor would constitute new evidence, which is forbidden at an oral hearing.

In, Inc. v. Uniloc Luxembourg S.A. (IPR2017-00948), the PTAB held that while 35 U.S.C. 311(b) limits a petitioner in an inter partes review to requesting cancellation of existing patent claims under Sections 102 and 103, this does not limit the grounds of unpatentability that can be raised by a petitioner and/or considered by the Board in response to proposed substitute amended claims presented in a motion to amend.  35 U.S.C. 316(d) governing motions to amend does not present such a limitation.  Thus, the Board may consider Section 101 and 112 issues when evaluating proposed amended claims for unpatentability.

The precedential opinions may be accessed through the USPTO website at

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