Concerns Raised Regarding PTAB Rules on Joinder and Expanded Panels

Author: Paula E. Miller
Editor: Jason E. Stach

In Nidec Motor Co. v. Zhongshan Broad Ocean Motor Co., No. 16-2321 (Fed. Cir. Aug. 22, 2017), the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s) decision that claims directed to a low-noise HVAC system were invalid as obvious.  In doing so, Judges Dyk and Wallach issued a concurring opinion calling into question the PTAB’s view that the joinder provision of 35 U.S.C. § 315(c) allows a petitioner to add time-barred new issues to its own timely-filed inter partes review.  The judges also questioned whether the PTAB may properly achieve uniformity in its decisions by expanding its panels, adding judges to the panels in the hope that those judges will tip the balance toward a different result than the original panel.  For more information on this case, tune in to our Federal Circuit IP Blog. Continue reading

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Federal Circuit PTAB Appeal Statistics – August 1, 2017

Authors: David C. SeastrunkDaniel F. KlodowskiElliot C. Cook
Editor: Jason E. Stach

Through August 1, 2017, the Federal Circuit decided 236 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 175 (74.15%) cases, and reversed or vacated the PTAB on every issue in 25 (10.59%) cases. A mixed outcome on appeal, where at least one issue was affirmed and at least one issue was vacated or reversed, occurred in 26 (11.02%) cases.

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PTO Designates Precedential its Athena Automation Decision on Assignor Estoppel in IPR

Author: Jason E. Stach
Editor: James D. Stein 

The PTAB designated as precedential its Institution Decision in Athena Automation Ltd. v. Husky Injection Moldings Systems Ltd., IPR2013-00290, Paper No. 18 (Oct. 25, 2013). According to the Patent Office’s message announcing this new precedential designation, “[t]his decision determines that the doctrine of assignor estoppel is not an exception to 35 U.S.C. § 311(a), which allows ‘a person who is not the owner of a patent’ to file a petition for inter partes review.” Continue reading

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