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By Ann Robl
Dunlap Codding, Oklahoma City, Oklahoma

Recently, the Patent Trial and Appeal Board (PTAB) designated one inter partes review decision as precedential and three inter partes review decisions as informative.

The precedential decision is General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19), Section II.B.4.i.  The decision discusses how PTAB decides whether to permit “follow-on” petitions (that is, petitions filed for inter partes review of a patent after the filing of an initial petition for inter partes review of the same patent) and PTAB’s authority to deny such petitions under 35 U.S.C. § 314. The decision also discusses the use of expanded panels by PTAB.

The three informative decisions address different aspects of how PTAB addresses whether to institute an IPR under 35 U.S.C. § 325(d) based on whether the same or substantially the same prior art or arguments previously were presented to the Office. As summarized by the USPTO in its October 24 bulletin, the informative decisions address the following:

  • In Unified Patents, Inc. v. Berman, Case IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10), “the Board denied institution of one ground under § 325(d) because the petitioner asserted an obviousness combination that included a reference the examiner considered during prosecution and a second reference that was cumulative of prior art that the examiner considered. The Board also declined to exercise discretion under § 325(d) with respect to a second asserted obviousness combination, where the examiner did not consider the asserted references during prosecution, and the references were not cumulative of the prior art the examiner considered during prosecution.”
  • In Hospira, Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27, 2017) (Paper 16) the Board denied institution under § 325(d) because the examiner considered during prosecution, and found persuasive, the same arguments the petitioner raised regarding the patent owner’s claim to priority. The Board concluded that the examiner’s previous priority determination was dispositive as to each of the asserted grounds of unpatentability.”
  • And, in Cultec, Inc. v. Stormtech LLC, Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7), “the Board denied institution under § 325(d) because (i) the examiner previously considered two of the asserted references—one reference was raised in a third-party submission that the examiner discussed in rejecting the claims and the other reference the examiner cited and applied throughout prosecution; and (ii) the two additional references upon which the petitioner relied were cumulative of prior art the examiner considered during prosecution.”

Copies of decisions designated as informative and precedential can be found on the PTAB's Informative Opinions Page and the PTAB’s Precedential Opinions Page of the USPTO website. Additionally, during PTAB’s "Chat with the Chief" webinar on October 24th, the Patent Office announced plans to streamline the Opinions page for easier access to decisions.