April 17, 2019

Issue Fourteen: PTAB Trial Tracker

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB, district court, and Federal Circuit decisions relating to emerging post-grant issues.

Precedential Opinion Panel Announces Precedential and Informative Decisions

In September 2018, the PTAB revised its standard operating procedures by creating a process for designating previously issued decisions as precedential or informative, in an effort to bring greater consistency across decision makers at the PTAB. See revised SOP. These revisions set forth the operation of the Precedential Opinion Panel (POP) and its process for designating decisions as routine (merely binding on the case it was issued in), informative (setting forth “norms” that should be followed in most cases, absent justification for a different outcome), or precedential (binding authority in subsequent matters involving similar facts or issues). Under this process, previous PTAB decisions can be nominated by the director, by any party to the proceeding in which the decision issued (with a request for rehearing), or by any member of the Board for review by the POP. Recently, the POP has begun issuing opinions designating decisions as informative or precedential, including:


  • Proppant Express Invs. et al. v. Open Tech. LLC, IPR2018-00914 Paper 38 (March 13, 2019) The POP held that, under 35 U.S.C. § 315(c), the Board has discretion to allow (1) a petitioner to be joined to a proceeding in which it is already a party and (2) joinder of new issues into an existing proceeding. The existence of a time bar under 35 U.S.C. § 315(b) is one of several factors that may be considered when exercising discretion under § 315(c). The Board noted, however, that Petitioners should not expect the Board to exercise this discretion to correct Petitioners’ own errors.
  • Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129 Paper 15 (February 25, 2019) The Board provided guidance regarding motions to amend. The Board clarified various aspects of the motion to amend procedure, including contingent motions, the burden of persuasion, and the permitted scope of the substitute claims.
  • DePuy Synthes Prods., Inc. v. Medidea, L.L.C., IPR2018-00315 Paper 29 (January 23, 2019) The Board held that not even inventors may provide oral testimony to the panel if such inventors did not previously provide a declaration. Such oral testimony would be new evidence that is barred under the PTAB Trial Practice Guide.
  • K-40 Elecs., LLC v. Escort, Inc., IPR2013-00203 Paper 34 (May 21, 2014) The Board held that under “very limited circumstances . . . the Board may [] require live testimony where [it] considers the demeanor of a witness critical to assessing credibility.” The Board determined that the credibility of a fact witness could be case dispositive and granted Patent Owner’s request to present live testimony of the sole inventor who provided evidence supporting Patent Owner’s attempts to antedate the only two references relied on in the Petition. The Board limited testimony to cross-examination and redirect to prevent any risk of “re-writing” the evidence.
  •, Inc. et al. v. Uniloc Luxembourg S.A., IPR2017-00948 Paper 34 (January 18, 2019) Addressed in more detail here, the Board held that petitioners may raise challenges to substitute claims under § 101.


  • Ex parte Smith, 2018-000064 (Feb.1, 2019) The Board examined the claims at issue under the framework laid out in USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, addressed in more detail here. In reversing the decision of the Examiner, the Board found the claims recite additional elements that integrate the judicial exception into a practical application.

Board Likely to Deny Institution Where Petition Establishes Likelihood of Success for Only Minority of Grounds or Claims

In Biofrontera Inc. v. DUSA Pharm., IPR2018-01585 Paper 10 (February 26, 2019), the Board denied institution despite finding that a handful of claims of each challenged patent were likely invalid, noting that most claims would survive review making the “burden” of addressing all claims outweigh the benefits of institution. Similarly, in Biodelivery Sci. Int’l v. Aquestive Therapeutics, Inc., IPR2015-00165, Paper 91 (Feb. 7, 2019), the Board, on remand from the Federal Circuit in view of SAS, reconsidered its institution decision and exercised its statutory discretion to deny institution, finding that Petitioner had failed to establish a reasonable likelihood of success for six out of seven proposed grounds and most of the claims challenged in the remaining ground.

Notably, the POP recently designated two similar decisions as informative: Chevron Oronite Co. LLC v. Infineum USA L.P., Case IPR2018-00923 Paper 9 (PTAB Nov. 7, 2018) and Deeper, UAB v. Vexilar, Inc., Case IPR2018-01310 Paper 7 (PTAB Jan. 24, 2019). In both of these decisions, the Board denied institution where it found that Petitioner had a reasonable likelihood of prevailing on only two challenged claims.

Takeaway: In light of SAS, the Board is more critically weighing the judicial economy of instituting a proceeding. Petitioners should carefully craft the Petition to assert the strongest arguments, while also being mindful of estoppel in later proceedings.

Printed Publication Issues Remain Critical

In Hamamatsu Photonics K.K. v. Semicaps PTE Ltd., IPR2017-02110, Paper 35 (March 18, 2019), the Board found all challenged claims not unpatentable, in part, as a result of finding that the prior art reference “Quah” is not a prior art printed publication. Petitioner contended that Quah was distributed on a CD to attendees of a scientific conference. Petitioner, however, did not enter the CD into evidence, and instead relied on a version of Quah that was made available in the IEEE Xplore digital library several months later. Despite declarations from two witnesses—one explaining he had attended the conference and received the CD, and one from IEEE describing its practice of providing conference materials to attendees—the Board found that there was insufficient evidence to show that the precise copy of Quah relied on in the Petition was, in fact, on the CD-ROM distributed at the conference.

Petitioner argued that the Federal Circuit in GoPro established a lower threshold for establishing a prior art printed publication. The Board distinguished the GoPro case stating that the issue here was not the publication status of the reference but whether Quah, as relied on in the Petition, was actually on the CD and therefore prior art.

Takeaway: While GoPro may have relaxed the threshold for establishing that a reference is a printed publication, Petitioners should be prepared to prove that the exact version of the document—headers, footers, and all—was in the prior art. If the original content is not available, Petitioners should provide adequate explanation of any differences in versions.

Importantly, the law of printed publications is still evolving. The POP recently agreed to review the Board’s decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, dealing with the question: What is required for a petitioner to establish that an asserted reference qualifies as “printed publication” at the institution stage? The POP has invited amicus briefs and additional briefing from the parties.