Eugene Goryunov in Law360: 6 PTAB Issues

12/26/2019

Law360 quoted Haynes and Boone, LLP Partner Eugene Goryunov in an article about issues the Patent Trial and Appeal Board (PTAB) faced in 2019.

Here is an excerpt:

Consistency

The PTAB spent 2019 trying to add more uniformity to its case law, designating 18 decisions as precedential and another 13 as informative.

Additionally, its Precedential Opinion Panel started issuing decisions that bind PTAB panels — although it’s unclear whether it binds the Federal Circuit.

The Precedential Opinion Panel (POP) issued a third decision on Dec. 20 in Hulu LLC v. Sound View Innovations LLC, addressing what patent challengers must do to establish that a textbook or other printed publication was publicly available. A fourth case, Hunting Titan Inc. v. DynaEnergetics GmbH & Co. KG Inc., remains pending and deals with the PTAB creating its own grounds for rejecting a patent amendment.

“It's a great opportunity for the Patent Office to set its own truly binding, across-the-board precedent rather than have to wait for the Federal Circuit to weigh in,” said Haynes and Boone, LLP Partner Eugene Goryunov, adding that often Federal Circuit appeals are decided without opinions. “It allows for more clarity for people right away.”

Discretion

The other is a September 2018 decision refusing NHK Spring Co. Ltd.’s request for review of a patent related to a component in hard disk drives. The PTAB cited a looming trial in a parallel district court case as a factor weighing in favor of denying review.

Goryunov at Haynes and Boone said the Patent Act had suggested such discretion, but never spelled out when it can be used.

“The board has done phenomenal things since then,” he said, pointing to cases like General Plastics and Valve. “I think the past year, as well as the next year, will add a lot of color to what’s going on with discretion.”

To read the full article, click here. (Subscription required)

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