PTAB Provides More Guidance for Patent Post Grant Proceedings


Recently, the Patent Trial and Appeal Board (PTAB) added the following order and decisions to its list of Representative Orders, Decisions, and Notices regarding patent post grant proceedings:

- A representative order regarding motions to amend patent claims in an Inter Partes Review. The order discusses Patent Owners’ motions to amend claims and the requirement of presenting a prima facie case of patentability of narrower substitute claims. Originally issued in MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015).

- An informative decision granting a request for additional discovery in an Inter Partes Review. The decision provides guidance on narrowly tailoring a request for additional discovery concerning privity and real party-in-interest issues. Originally issued in Arris Group, Inc. v. C-Cation Techs., LLC, IPR2015-00635 (Paper 10) (PTAB May 1, 2015).

- A representative decision declining to apply estoppel to dismiss a Covered Business Method (CBM) patent review. The claims at issue had been the subject of a prior request for CBM patent review, for which the PTAB had denied institution on particular claims. Because the prior request for CBM patent review did not result in a Final Written Decision for those claims, the PTAB held that estoppel did not apply to those claims. Originally issued in Westlake Services LLC v. Credit Acceptance Corp., CBM2014-00176 (Paper 28) (PTAB May 14, 2015). 

Note that informative and representative documents are not binding authority under PTAB rules, but are meant to provide information and guidance. 

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