Recent Precedential PTAB Decisions - May 2019

The Board’s Precedential Opinion Panel has been hard at work designating several decisions as precedential. According to the Board’s Standard Operating Procedures (SOP), the Precedential Opinion Panel issues a precedential decision only for issues of exceptional importance involving policy or procedure. A precedential decision is binding Board authority in matters involving similar facts or issues.

Adello Biologics LLC v. Amgen Inc., PGR2019-00001 (Paper 11) (PTAB Feb. 14, 2019)

Allowing a Petitioner’s update to its Mandatory Notices and add a Real-Party-in-Interest (RPI) without assigning a new Petition filing date because Petitioners did not act in bad faith or engage in gamesmanship, and the delay in naming did not result in any undue prejudice to Patent Owner.

Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2017-01917 (Paper 86) (PTAB Feb. 13, 2019)

Denying a Patent Owner’s motion to terminate because the Petition was not time-barred and because the RPI that was added in an update to its mandatory notices would not have been time-barred if named at the time the Petition originally was filed. 

Ventex Co., Ltd. v. Columbia Sportswear North America, Inc., IPR2017-00651 (Paper 152) (PTAB Jan. 24, 2019)

Terminating an instituted proceeding because the Petition was time-barred because Petitioner failed to name an RPI and privy that would have been time-barred if properly named at the time the Petition was filed.

Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, (Paper 11) (PTAB Apr. 2, 2019)

Applying the General Plastic factors and denying institution when different Petitioners challenge the same patent in serial petitions.

NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752 (Paper 8) (PTAB Sept. 12, 2018)

Denying institution after determining that review would be an inefficient use of Board resources where a parallel district court proceeding was nearing final stages and involved the same arguments asserted in the Petition.