Posts Tagged: "precedential decisions"

PTAB Precedential: Two Decisions Against Exercising Discretion to Deny Institution Made Precedential

On December 17, the U.S. Patent and Trademark Office (USPTO) designated two opinions as precedential, both decisions where the PTAB considered the so-called Fintiv factors and decided against exercising its discretion to deny institution of the inter partes review (IPR) challenges. In Sotera Wireless, Inc. v. Masimo Corporation, the PTAB addressed the Fintiv factors and noted that a petitioner’s broad stipulation not to pursue in district court proceedings any ground that it raised, or could have raised, in the inter partes review weighs strongly in favor of institution. In Snap, Inc. v. SRK Technology LLC, also analyzing the Fintiv factors, the PTAB explains that a district court stay that would remain in place until an inter partes review final written decision weighs strongly in favor of institution.

What the PTAB’s Precedential Decisions on Live Testimony and Substitute Claims Mean for PTAB Litigation

On Monday, March 18, 2019, the Patent Trial and Appeal Board (PTAB) designated three decisions as precedential. Two of the three decisions—K40 Electronics LLC v. Escort Inc. (“K40 Electronics”),[AIA, live testimony at oral argument] and DePuy Synthes Products Inc. v. Medidea LLC (“DePuy Synthes Prods”) [AIA, live testimony at oral argument]—explained the limited circumstances in which live testimony may be allowed during PTAB proceedings. The third decision, Inc. v. Uniloc Luxembourg SA (“”) [AIA § 316(d), grounds that can be raised against substitute claims], affirmed that the PTAB has the authority to consider whether substitute claims are patentable on more grounds than just novelty and non-obviousness. The recent designations not only provide guidance to prospective litigants in PTAB proceedings, but develop the scope of PTAB litigation as a viable alternative to district court litigation.