5 Informative Decisions From The PTAB

On July 10, 2018, the PTAB informed the patent bar that they designated five decisions as informative for: issue preclusion; use of and versus or when referencing lists; DJ bar for joinder cases; depositions in foreign languages; and motions to seal.

Two are from ex parte examination:

Ex parte Ditzik, 2018-000087 (Mar. 2, 2018). The Board found the Examiner properly used issue preclusion despite the appellant arguing: (A) different standards of the forums; (B)different claims; (C) new evidence; (D) incorrect trial testimony resulted in the wrong result at trial and on appeal; (E) appellant did not have a full and fair opportunity to litigate; (F) the district court’s judgments are not final; (G) the PTO was not a party to the prior proceedings; and (H) the Board should use its discretion to provide expert guidance.

Ex parte Jung, 2016-008290 (Mar. 22, 2017). The Board applied SuperGuide Corp v. DirecTV Enters.,Inc., 358 F.3d 870, 885­–86 (Fed. Cir. 2004) — there is a difference between a list separated by “and” and “or.” The meaning of “at least one of A and B” is the conjunctive phrase requiring the presence of both A and B. The Examiner can rebut by demonstrating that the claims, specification, or prosecution history requires a broader meaning.

Three are from inter partes review proceedings:

Colas Sols. Inc. v. Blacklidge Emulsions, Inc., Case IPR2018-00242, Paper 9 (Feb. 27, 2018). A motion for joinder does not exempt a petition from the statutory bar of § 315(a)(1) (barring institution of an inter partes review where a petitioner files a declaratory judgment action challenging the same patent before filing a petition). § 315(b) states that it “shall not apply to a request for joinder under subsection (c),” but § 315(a)(1) does not include similar language.

Ariosa Diagnostics v. Isis Innovation Ltd., Case IPR2012-00022, Paper 55 (Aug. 7, 2013). 12 general guidelines for taking a deposition in a foreign language pursuant to 37 C.F.R. § 42.53

Argentum Pharm. LLC v. Alcon Research, Ltd., Case IPR2017-01053, Paper 27 (Jan. 19, 2018). Establishing guidance for motions to seal under 37 C.F.R. § 42.54(a) (“[t]he Board may, for good cause, issue an order to protect a party . . . from disclosing confidential information”). One must demonstrate that: “(1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.”

This article appeared in the July 2018 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.