On May 10, 2016, the Patent Trial and Appeal Board (PTAB or Board) designated five post-grant trial decisions as precedential, bring the total number of precedential decisions in inter partes review (IPR) and covered business method (CBM) proceedings to eight. Of the five decisions, two address additional discovery and the remaining three address, respectively, the one-year time period for filing a petition, the amendment of claims and the requirements for PTAB consideration of a petition. A summary of the holdings follows.

The PTAB upgraded Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case No. IPR2012-00001 (PTAB, Mar. 5, 2013) (Lee, APJ) from informative to precedential. In the decision, the PTAB identified five factors that it considers when deciding whether additional discovery is “necessary in the interest of justice.” The factors include the following:

• Whether there is more than a possibility and a mere allegation that the discovery will produce something useful

• Whether the discovery request is asking the other party’s litigation positions and underlying basis for those positions

• Whether the requester has the ability to obtain the information by other means

• Whether the instructions to locate the documents are easy to understand

• Whether the request is unduly burdensome

This case is the subject of a decision by the Supreme Court of the United States issued on June 20, 2016, discussed in this edition of IP Update.

In Bloomberg, Inc. v. Markets-Alert Pty, Ltd., Case No. CBM2013-00005 (PTAB, May 29, 2013) (Chang, APJ), the PTAB addressed a motion for additional discovery in a CBM review. Because CBM reviews share the same public policy, statutory and regulatory considerations or discovery as IPRs, the PTAB held that the Garmin factors are helpful in determining whether to grant additional discovery in a CBM review. The PTAB slightly modified the factors for the CBM context, however, because of the heightened standard of “for good cause” in granting additional discovery.

In Oracle Corp. v. Click-to-Call Techs, LP, Case No. IPR2013-00312 (PTAB, Oct. 30, 2013) (Zecher, APJ), the PTAB only made Section III.A of the order precedential. In that section, the PTAB rejected the patent owner’s argument that the petition was barred pursuant to 35 USC § 315(b), which requires filing of an IPR petition within one year of service of a complaint. The original complaint on which the patent owner relied, however, was dismissed voluntarily without prejudice, pursuant to a joint stipulation. The US Court of Appeals for the Federal Circuit holds that the effect of such dismissals leaves the parties as though the action had never been brought. Therefore, the patent owner could not rely on the earlier filed complaint to bar the petition.

In MasterImage 3D, Inc. v. RealD Inc., Case No. IPR2015-00040 (July 15, 2015) (Lee, APJ), the PTAB clarified the burden of the patent owner in a motion to amend. The patent owner has the burden to show a patentable distinction over the prior art of record and the prior art known to the patent owner. The PTAB clarified that prior art of record includes (1) material art from the prosecution history of the patent, (2) material art of record in the current proceeding, and (3) any material art of record in another proceeding before the US Patent and Trademark Office. Prior art known to the patent owner is no more than material prior art the patent owner makes of record in the current proceedings under its duty of candor and good faith. Finally, the PTAB explained that “once Patent Owner has set forth a prima facie case of patentability of narrower substitute claims over the prior art of record, the burden of production shifts to Petitioner.”

In Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case No. IPR2015-00739 (Mar. 4, 2016) (Tartal, APJ), the PTAB denied a motion to terminate and held that 35 USC § 312(a) was not jurisdictional. Rather, § 312(a) merely sets forth requirements that a petition must satisfy, including naming all parties of interest. A lapse in compliance with § 312(a) does not deprive the PTAB of jurisdiction or preclude it from permitting such lapse to be rectified.