PTAB Designates Precedential Two Opinions Regarding IPR Time Bar And Pre-Institution Disclaimer
On September 9, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated two decisions as precedential. Infiltrator Water Technologies, LLC v. Presby Patent Trust, IPR Case No. IPR2018-000224, Paper 18 (PTAB Oct. 1, 2018) (designated: Sept. 9, 2019); General Electric Company v. United Technologies Corporation, IPR Case No. IPR2017-00491, Paper 9 (PTAB July 6, 2017) (designated: Sept. 9, 2019). In Infiltrator Water, the PTAB held that a dismissal of a complaint without prejudice for lack of personal jurisdiction does not reset the one-year time bar for a petitioner to file a petition for inter partes review. In General Electric, the PTAB denied institution where the patent owner disclaimed the challenged claims.
PTAB Designates Precedential Two Additional Opinions Regarding Discretionary Denials Of IPR Institution Under Sections 314(a) And 325(d)
On August 2, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential two Decisions on Institution. Valve Corp. v. Elecs. Scripts Prods. Inc., IPR Case Nos. IPR2019-00064, -00065, -00085, Paper 10 (PTAB May 1, 2019) (designated: Aug. 2, 2019); Becton, Dickinson & Co. v. B Braun Melsungen AG, Case No. IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (designated: Aug. 2, 2019). In Valve, the PTAB held that General Plastic factor 1—concerning discretionary denials under 35 U.S.C. § 314(a) for “follow-on” petitions—applied to a joined petitioner. In Becton, Dickinson, the PTAB delineated a list of factors to consider when determining whether to exercise its discretion to deny a petition under 35 U.S.C. § 325(d) where “the same or substantially the same prior art or arguments previously were presented to the Board.”