Authored by Ann Robl, July 28, 2015 at 9:52 am

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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