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By Ann Robl
Dunlap Codding, Oklahoma City, Oklahoma

Recently, the USPTO Patent Trial and Appeal Board (PTAB) designated two more decisions as Informative. Both involve 35 U.S.C. § 315(b) regarding the time bar to filing petitions for inter partes reviews. The following is a description of the decisions from the USPTO:

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

In this decision, the Board denied institution after determining that the Petition was not timely filed under 35 U.S.C. § 315(b), because payment was not received by the Office until after the date the Petition was filed. The Board also denied Petitioner’s motion to assign an earlier filing date to the Petition after determining that Petitioner failed to show good cause for waiving the fee requirement.

Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals, Inc., IPR2014-00360 (PTAB June 27, 2014) (Paper 15).

In this decision, the Board determined that the Petitioner was timely filed under 35 U.S.C. § 315(b) because filing a motion to amend the complaint in district court, with an amended complaint attached, does not constitute service.

The Board also designated another decision as Precedential – Facebook, Inc. v. Skky, LLC, CBM2016-00091 (PTAB Sept. 28, 2017) (Paper 12), Section II.B.2. As described by the USPTO, “This expanded panel decision explains that covered business method patent review eligibility is determined based on the claims of the patent as they exist at the time of the decision to institute, and claims that a patent owner statutorily disclaims prior to institution will be treated as if they never existed for purposes of institution.”

Additionally, the Board has a new webpage to help the public find decisions of the Board. The page includes links to precedential and informative decisions;representative AIA trial orders, decisions, and notices; Freedom of Information Act final decisions; and the PTAB End-2-End search site.