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IP Alert: PTAB Designates New Precedential and Informative Decisions on Procedural Issues

June 15, 2020

On June 11, the Patent Trial and Appeal Board (PTAB) designated one new precedential opinion and three informative decisions relating to a variety of procedural issues.

The PTAB designated as precedential an order in DTN, LLC v. Farms Technology, LLC, regarding the need to include collateral agreements referenced in a settlement agreement when filing a motion to terminate. When filing a motion to terminate IPR proceedings, the parties are obligated under 35 U.S.C. § 317(b) to file a copy of any agreement in connection with the termination including any collateral agreements referred to in such agreement or understanding. In DTN the PTAB held that to fall within the scope of section 317(b) and require disclosure, collateral agreements need not be between the patent owner and the petitioner and, further, that collateral agreements need not be made in connection with, or in contemplation of, terminating an inter partes review.

In addition, the PTAB designated three decisions as informative. First, in a post-grant review institution decision in Sattler Tech Corp. v. Humancentric Ventures, LLC, the PTAB instituted trial on a ground alleging that a design patent was unpatentable because it claimed functional features. The PTAB’s analysis addressed whether the petitioner had adequately shown that the claimed portions of a design for a TV mount were primarily functional, not ornamental. The Sattler case provides a useful road map for petitioners seeking to challenge design patents based on unpatentable functional claims.

Second, in a termination order in Kokusai Electric Corp. v. ASM IP Holding B.V., the PTAB decided that it was unnecessary to reach a decision on the patent owner’s motion to amend before terminating the proceeding. The PTAB reasoned that the patent owner may pursue the amended claims in a reissue or reexamination proceeding.

Third, in a pre-trial order in Curt G. Joa, Inc. v. Fameccanica.data S.P.A., the PTAB addressed issues relating to the use of confidential information during an oral hearing. The parties were each granted 60 minutes of time for argument, of which no more than 15 minutes could be used for arguments relating to confidential information during a session closed to the public. The PTAB directed the parties to refrain from including information designated as confidential in any demonstrative exhibit, but instead to refer to such information during the closed session by exhibit, page, and line number.

These newly designated cases and all of the other cases designated as precedential or informative are available on the PTAB’s website here. For more information on these cases or on practice at the PTAB, please contact Fitch Even partner David A. Gosse, author of this alert.

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