The Patent Trial and Appeal Board (PTAB or the Board) designated its first precedential decision in 2014, SecureBuy LLC v. CardinalCommerce Corporation, CBM 2014-00035, Paper 12 (April 25, 2014), which concerned the statutory requirements for instituting a covered business method (CBM) patent review. At the beginning of the 2016 year, the Board designated two more, which can be read about here.

In May 2016, five more decisions were designated as precedential, bringing the total of PTAB Precedential Decisions to eight. The five that have most recently been given the precedential designation are the following:

Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013): This decision involves the factors to be considered when evaluating motions for additional, non-routine discovery in inter partes review proceedings. Prior to being designated as precedential, this decision was marked as “informative.” PTAB decisions are designated as either precedential, informative, representative, or routine.

Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013): Like the first case, this decision also deals with the factors considered when evaluating motions for additional discovery, but in CBM patent review proceedings.

Oracle Corp. v. Click-to-Call Techs., LP, IPR2013-00312, Paper 26 (October 30, 2013): This decision involves a rule stating that an inter partes review cannot be instituted if the petition was filed more than one year after the date when the complaint was served, and deals specifically with the interpretation of the phrase “served with a complaint.”

MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (July 15, 2015): This decision involves clarifying the standard for patent owner Motions to Amend. The patent owner has the burden to show entitlement to substitute claims, and this decision defined “prior art of record” and “prior art known to the patentee.” Previously, this decision was designated as representative.

Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Paper 38) (March 4, 2016):  This decision involves the requirement that petitions should name all of the interested parties, and the fact that changes during a proceeding can be corrected.


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    An Introduction to Design Patent Applications

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    An Introduction to Patent Cooperation Treaty Applications

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    The Lanham Act: Disparagement Provision Violates the First Amendment

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    Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance


Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899



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