Phosita IP Blog


Recently, the Patent Trial and Appeal Board (PTAB) designated one inter partes review decision as precedential and three inter partes review decisions as informative.

The precedential decision is General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19), Section II.B.4.i.  The decision discusses how PTAB decides whether to permit “follow-on” petitions (that is, petitions filed for inter partes review of a patent after the filing of an initial petition for inter partes review of the same patent) and PTAB’s authority to deny such petitions under 35 U.S.C. § 314. The decision also discusses the use of expanded panels by PTAB.

The three informative decisions address different aspects of how PTAB addresses whether to institute an IPR under 35 U.S.C. § 325(d) based on whether the same or substantially the same prior art or arguments previously were presented to the Office. As summarized by the USPTO in its October 24 bulletin, the informative decisions address the following:

  • In Unified Patents, Inc. v. Berman, Case IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10), “the Board denied institution of one ground under § 325(d) because the petitioner asserted an obviousness combination that included a reference the examiner considered during prosecution and a second reference that was cumulative of prior art that the examiner considered. The Board also declined to exercise discretion under § 325(d) with respect to a second asserted obviousness combination, where the examiner did not consider the asserted references during prosecution, and the references were not cumulative of the prior art the examiner considered during prosecution.”
  • In Hospira, Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27, 2017) (Paper 16) the Board denied institution under § 325(d) because the examiner considered during prosecution, and found persuasive, the same arguments the petitioner raised regarding the patent owner’s claim to priority. The Board concluded that the examiner’s previous priority determination was dispositive as to each of the asserted grounds of unpatentability.”
  • And, in Cultec, Inc. v. Stormtech LLC, Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7), “the Board denied institution under § 325(d) because (i) the examiner previously considered two of the asserted references—one reference was raised in a third-party submission that the examiner discussed in rejecting the claims and the other reference the examiner cited and applied throughout prosecution; and (ii) the two additional references upon which the petitioner relied were cumulative of prior art the examiner considered during prosecution.”

Copies of decisions designated as informative and precedential can be found on the PTAB’s Informative Opinions Page and the PTAB’s Precedential Opinions Page of the USPTO website. Additionally, during PTAB’s “Chat with the Chief” webinar on October 24th, the Patent Office announced plans to streamline the Opinions page for easier access to decisions.  


DC On Film Row

About DC on Film Row

DC on Film Row is a free event space open to everyone in our community.

We like to say that the space is a “home for creatives and innovators, home builders and the homeless, celebrators and the celebrated” so people understand that we are inclusive and want everyone from throughout our community using our space.

Our goal is to celebrate the incredible diversity of creativity, innovation, and passion within Oklahoma City and to provide a venue—free of charge—to those groups and individuals working to bind us all together and make our home a cooler and better place. No strings attached—no extensive rules to follow. We simply ask that all of our neighbors be honored and that all viewpoints be respected. Our criteria for use is simple: If the event, group, or meeting is something which strengthens our community and brings us all together, the space is available for use.

The space has hosted everything from charitable fundraisers to an underground nightclub party to celebrate Canterbury Choral Society’s 45th anniversary season. We host dinners for the OKC homeless population most Monday evenings where upwards of 250 people are served—we provide the space and soft drinks and a local church provides the food. We’ve hosted university planning retreats and monthly local rock concerts.

Every Wednesday, we open up the courtyard for lunch, invite a local food truck to set up outside our gates, and welcome our downtown neighbors into the space for a bit of socialization.

Our never-ending soda fountain seems to be the biggest hit with some of our neighbors while others spend time playing pool or simply chatting about what is happening on the weekend.

For October we turn the space into a haunted house and invite the neighborhood children to come out and trick-or-treat.

Got an idea for how to use the space? Just ask us – we’re almost certain to say yes!

The Space for Ideas.

Protecting all things creative

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