Maier & Maier

PTAB Designates a Flurry of Opinions As Precedential In Wake of Boalick Appointment

Since his official appointment to his post as Chief Judge of the PTAB, Boalick has wasted no time in making his mark. Beginning the very day his permanent appointment became official last month, the PTAB has issued a number of precedential opinions. Most notably, the new Precedential Opinion Panel or POP (created in September’s updates to the Standard Operating Procedures) issued their first opinion.

The POP (which includes Chief Judge Boalick and his Deputy Jacqueline Bonilla among others) issued its first decision in an Inter Partes Review between Proppant Express Investments and Oren Technologies (IPR2018-00914, Paper 38). At issue in the decision was the hot button same party joinder issue. In the decision, the POP declared that 35 U.S.C. § 315(c) provides discretion for the Board to allow a petitioner to join a proceeding in which it is already a party, as well as the joinder of new issues into an existing proceeding. The decision emphasized the rarity in which such a circumstance would come about and identified fairness, undue prejudice, and the § 315(b) timebar as important considerations when deciding whether to exercise such discretion.

Among the other newly precedential opinions are the following:

Adello Biologics LLC v. Amgen Inc., Case PGR2019-00001 (PTAB Feb. 14, 2019) (Paper 11) (allowing update to Mandatory Notices without assigning a new filing date because omission of RPI was not in bad faith nor was it unduly prejudicial to Patent Owner)

Proppant Express Investments, LLC v. Oren Technologies, LLC, Case IPR2017-01917 (PTAB Feb. 13, 2019) (Paper 86) (finding no timebar because RPI added to petition would not have been timebarred if it had been added when it was originally filed and laying out factors relating to the related POP decision)

Ventex Co., Ltd. v. Columbia Sportswear North America, Inc., Case IPR2017-00651 (PTAB Jan. 24, 2019) (Paper 152) (dismissing Petition because omitted RPI would have been timebarred if named in original filing)

K-40 Electronics, LLC v. Escort, Inc., Case IPR2013-00203 (PTAB May 21, 2014) (Paper 34) (listing factors to be considered in permitting live testimony)

DePuy Synthes Products, Inc. v. MEDIDEA, L.L.C., Case IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29) (finding inventor testimony at oral hearing to be impermissible new evidence without previously provided declaration)

Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC, Case IPR2018-00816 (PTAB Jan. 8, 2019) (Paper 19) (procedural overview for submission of new evidence and showing of good cause)

These and more precedential decisions are available on the PTAB’s Precedential and Informative Decisions page.

Category: General