In a desperately needed release on Tuesday May 10th 2016 the USPTO designated five PTAB opinions as precedential in a laudable effort aimed at establishing a workable body of law for post grant proceedings. Per Standard Operating Procedure 2 (Revision 9) “a precedential opinion is binding authority in subsequent matters involving similar facts or issues.”
Since the launch of the AIA and the record speed creation of the PTAB many administrative patent judges and PTAB practitioners have relied on their own instincts and wit while navigating uncharted waters. The recently designated precedential opinions should guide practitioners on matters such as; additional discovery for IPR and CBM proceedings, when the one year time bar of 35 U.S.C. § 315(b) begins to toll, and guidance on a patent owners burden to show entitlement to substitute claims.
Garmin Int’l v. Cuozzo Speed Techs LLC, discusses the factors considered in evaluating motions for additional discovery in IPR proceedings.
Bloomberg, Inc. v. Markets-Alert Pty, Ltd., the factors considered in evaluating motions for additional discovery in CBM proceedings.
Oracle Corp. v. Click-to-Call Techs, LP, pertains to interpretation of “served with a complaint” for purposes of triggering the one-year time bar set forth in 35 U.S.C. § 315(b).
MasterImage 3D, Inc. v. RealD Inc., provides guidance on patent owner’s burden to show entitlement to substitute claims.
Lumentum Holdings, Inc. v. Capella Photonics, Inc., interprets 35 U.S.C. § 312(a)(2).
The AIA stipulates that a decision to institute a post grant trial shall be final and non-appealable. There are good arguments for and against this proposition which won’t be discussed here but it is important to note that if the USPTO is going to serve the public interest they must emphatically embrace their role in designating precedential opinions because by statute they are the only body who can. Cuozzo Speed Technologies, LLC v. Lee was recently argued at The Supreme Court, has been watched closely for years, and is just now becoming precedential.
The issuance of an official statement blessing these opinions as precedential indicates that the USPTO is taking the notion that they are necessarily the defacto party to establish precedential opinions seriously. However, we should be asking ourselves what is taking so long? Why did the Board take so long to officially designate such an early case as precedential and what can the USPTO do to establish case law more quickly?
The Standard Operating Procedure 2 (Revision 9) of the USPTO indicates that any member of the board may nominate an opinion as precedential to the Chief Judge. The Chief Judge may then put the nomination to a vote for a stated time period (typically 10 days) in which all 270 or so Board Members may vote on an opinion they believe should be precedential. If a majority is reached the Chief Judge must then submit the findings in writing to the Director. Naturally, the Director has veto authority.
While it is easy to point fingers at the Office for untimely designation of precedential opinions it is important to note that perhaps we – as practitioners that is – also have a role to play. Notably, the Office makes clear that “the appellant, the patentee, a petitioner, or a third party member of the public may, within 60 days of issuance of the opinion, request in writing that an opinion be made precedential.” Perhaps the question we should be asking ourselves is not what the Office should do for us, but what we should do for the Office.