The Patent Trial and Appeal Board recently designated five additional opinions as “precedential,” more than doubling the total number of opinions so designated in the PTAB’s 41 months of operation. Unlike the first three opinions designated precedential, four of the five new binding decisions address issues other than when a proceeding is barred – including issues impacting the current Supreme Court review of PTAB procedure.
The most timely of the five new opinions designated as precedential, MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (July 15, 2015), relates to the requirements for making claim amendments during administrative review proceedings. Just a few weeks ago, the U.S. Supreme Court heard oral argument in Cuozzo Speed Technologies v. Lee. One issue under review in that case is the PTAB’s decision to apply a “broadest reasonable interpretation” standard of claim interpretation during administrative review of patent validity. The nominal object of the broadest reasonable interpretation standard is to ensure that the risk of overbroad patent claims is borne by the patentee, not the public, by exploring every reasonable construction of an ambiguous claim term for consistency with the requirements of patentability. By contrast, Article III courts and International Trade Commission panels deciding issues of patent infringement or validity employ a narrower, “plain and ordinary” meaning standard of claim interpretation, taking into account the context of the inventor’s usage of a claim term and the prosecution history that led to issuance of the patent.
During oral argument before the Supreme Court, the unfettered right a patent applicant or owner to amend claims in order to eliminate any potential uncertainty as to patentability was identified as justifying adoption of the broadest reasonable interpretation standard of claim interpretation in other Patent Office proceedings, such as original examination and reexamination. By contrast, the narrowly limited ability of patent owners to amend claims during PTAB administrative reviews was argued as warranting a standard consistent with that employed in other adjudicative tribunals. The PTAB’s now-precedential MasterImage decision elucidates on the burden of patent owners to succeed in amending the claims that was described in a prior, merely informative decision in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (June 11, 2013). Hence, the precedential designation of MasterImage is timed to possibly influence the Supreme Court’s decision in Cuozzo.
Three of the remaining four new precedential decisions also address matters of procedure, rather than when proceedings are barred. Two decisions, Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013) and Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013), address the standards for “additional” (as opposed to “routine”) discovery requests, and the factors for evaluating the more lenient “good cause” standard for additional discovery in covered business method and post-grant reviews with the stricter “interests of justice” standard in inter partes review. Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 (Mar. 4, 2016) discusses why the statutory requirement that all real parties in interest to an administrative review proceeding be identified is not a jurisdictional requirement, such failure to identify all real parties of interest does not deprive the PTAB of authority to either decide the matter or allow the failure to be rectified.
Only one of the five new precedential decisions, Oracle Corp. v. Click-to-Call Techs, LP, IPR2013-00312, Paper 26 (Oct. 30, 2013), continues the trend of the first three in addressing only when a proceeding is barred. That decision states that “served with a complaint” under 35 U.S.C. § 315(b) does not trigger the one-year bar for filing an IPR petition where the entire complaint was voluntarily dismissed without prejudice. The “without prejudice” qualification distinguishes LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (Sept. 17, 2015), in which the first of two complaints was determined to meet the “served with a complaint” requirement triggering a one-year bar where the complaint was dismissed only partially without prejudice.
“Precedential” is the highest of four categories of PTAB decisions, indicating that the decision is binding in all future cases until overruled or superseded and used to resolve conflicts among multiple PTAB decisions or resolve novel issues. All PTAB decisions are considered at least “routine,” persuasive authority only as to the facts of a given proceeding. Decisions designated as “representative” are intended to suggest a typical outcome regarding a given issue, while “informative” decisions provide guidance on PTAB rules and practices based on review of representative decisions. Precedential decisions are therefore the only category to constrain future PTAB panels as to the particular outcome of a decision.
Nearly four years into administrative patent reviews, the PTAB has designated only eight precedential decisions out of tens of thousands of trial initiation decisions, final written decisions, and decisions on motions. This suggests that the PTAB, unlike other adjudicative bodies, does not consider its panels bound to any particular degree by stare decisis.