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Ex parte Ditzik, 2018-000087 (Mar. 2, 2018) – holding
that the Examiner’s invocation of issue preclusion was not in error based on
Appellant’s arguments. Appellant’s unpersuasive arguments included (A)
the standards of proof differ between a district court and the PTO; (B) the new
claims differ from the invalidated claims; (C) Appellant provides new evidence;
(D) incorrect trial testimony led to the district court and Federal Circuit
reaching the wrong result; (E) Appellant did not have a full and fair
opportunity to litigate; (F) the district court's judgments are not final; (G) the
PTO was not a party to the prior litigations; and (H) the Board should use its
discretion to provide expert guidance.
Ex parte Jung, 2016-008290 (Mar. 22, 2017) – applying
the Federal Circuit’s decision in SuperGuide Corp v. DirecTV Enters.,Inc.,
358 F.3d 870, 885–86 (Fed. Cir. 2004), which explains that there is a
difference between a list separated by “and” and “or,” where the plain and
ordinary meaning of “at least one of A and B” is the conjunctive phrase
requiring the presence of both A and B. The Examiner can rebut the
plain and ordinary meaning by providing the requisite supporting analysis that
demonstrates that the claims, specification, or prosecution history
necessitates a broader meaning.
Colas Sols. Inc. v. Blacklidge Emulsions, Inc., Case
IPR2018-00242, Paper 9 (Feb. 27, 2018) – holding that 35 U.S.C. §
315(a)(1) bars institution of an inter partes review where a petitioner
files a declaratory judgment action challenging the same patent before filing a
petition. The filing of a motion for joinder does not except a petition
from the statutory bar of § 315(a)(1). The time bar of § 315(b)
specifically states that it “shall not apply to a request for joinder under
subsection (c),” whereas § 315(a)(1) does not include similar language.
Ariosa Diagnostics v. Isis Innovation Ltd., Case
IPR2012-00022, Paper 55 (Aug. 7, 2013) – applying 37 C.F.R. § 42.53,
which governs the taking of testimony in trail proceedings, and setting forth
12 general guidelines for taking a deposition in a foreign language.
Argentum Pharm. LLC v. Alcon Research, Ltd., Case
IPR2017-01053, Paper 27 (Jan. 19, 2018) – applying 37 C.F.R. § 42.54(a),
which states that “[t]he Board may, for good cause, issue an order to protect a
party . . . from disclosing confidential information” and setting forth
guidance as to how a party can establish “good cause” to seal
information. In particular, a movant to seal must demonstrate that: “(1)
the information sought to be sealed is truly confidential, (2) a concrete harm
would result upon public disclosure, (3) there exists a genuine need to rely in
the trial on the specific information sought to be sealed, and (4) on balance,
an interest in maintaining confidentiality outweighs the strong public interest
in having an open record.
Copies of these informative decisions can be found on the PTAB’s
Precedential
and Informative Decisions page of the USPTO website.
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