The Patent Trial and Appeal Board (PTAB) designates three decisions as precedential

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PTAB designates three decisions as precedential

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

This order grants Petitioners’ Motion to Update their Mandatory Notices before the institution of trial and denies Patent Owner’s request for permission to file a Motion for Discovery of facts surrounding a real party-in-interest (RPI) issue. The Board determined that Petitioners’ update to the Mandatory Notices was permissible under 35 U.S.C. § 322(a)(2) without assigning a new filing date to the Petition because Petitioners did not act in bad faith or engage in gamesmanship in omitting the RPI from the Mandatory Notices in the Petition and Petitioners’ delay did not result in any undue prejudice to Patent Owner.

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

This order denies Patent Owner’s Motion to Terminate. The Board determined that the Petition was not time-barred under 35 U.S.C. § 315(b) in view of the Federal Circuit’s guidance in Applications in Internet Time (AIT) because the RPI that Petitioner added in an update to its mandatory notices would not have been time-barred if named at the time the Petition originally was filed. The Board further determined that the addition was permissible without assigning a new filing date to the Petition. This order also sets forth a number of factors that the Board previously has considered when allowing a new RPI to be named without assigning a new filing date to a petition, including: (1) avoiding 315(b) bar or estoppel rules; (2) prejudice to patent owner as a result of the delay; (3) bad faith; and (4) gamesmanship.

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

This redacted order dismisses the Petition, vacates the Decision instituting inter partes review, and terminates the proceeding. The Board determined that the Petition was time-barred under 35 U.S.C. § 315(b) in view of the Federal Circuit’s guidance in AIT because Petitioner failed to name an RPI and privy that would have been time-barred if named at the time the Petition originally was filed.

These precedential decisions can be found on the PTAB’s Precedential and Informative Decisions page of the USPTO website.

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