The Precedential Opinion Panel (POP), formed in September 2018, began rendering opinions in 2019. The POP is intended to provide two main functions: rehear matters in pending trials and appeals of exceptional importance; and assist the Director in determining whether a previously issued decision should be designated as precedential or informative. Its decisions are binding authority on the PTAB. In 2019, the POP issued 3 decisions, designated 8 decisions as precedential, and designated another 13 decisions informative. The three POP decisions are summarized below.

In Proppant Express Investments LLC v. Oren Technologies LLC, IPR2018-00914 (March 2019; Paper 38, precedential), the POP addressed discretionary joinder under §315(c). The POP held that (a) a petitioner may be joined to a proceeding in which it is already a named party, and (b) new issues may be added to an existing proceeding, irrespective of whether the petitioner is already a named party. The POP also advised that the one-year time bar under 35 USC §315(b) is one of several factors to consider when exercising its discretion.

In GoPro Inc. v. 360Heroes Inc., IPR2018-01754 (August 2019; Paper 38, precedential), the POP addressed the one-year time bar under § 315(b). It concluded that § 315(b)’s language, “served with a complaint alleging infringement” is plain and unambiguous. Thus, the service of a pleading alleging patent infringement triggers the one-year time period for filing an IPR petition under 35 U.S.C. § 315(b), regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient.

Notably, six days after the POP issued the GoPro decision, it also designated as precedential the decision in Cisco Systems, Inc. v. Chrimar Systems, Inc. IPR2018-01511 (PTAB Jan. 2019; Paper 11, designated precedential August 2019).. In that case, the PTAB held that that § 315(a)(1) bars institution of an inter partes review of a patent in which petitioner voluntarily dismisses its earlier civil action challenging the validity of that patent prior to filing the petition. 

In Hulu LLC v. Sound View Innovations LLC., IPR2018-01039 (December 2019; Paper 29, precedential), the POP addressed what is required for a petitioner to establish that an asserted reference qualifies as “printed publication” at the institution stage. The POP explained that the institution standard requires the petition identify with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent. That standard is higher than notice pleading, but lower than the preponderance standard. Further, there is no presumption in favor of institution or in favor of finding a reference to be a printed publication. The POP also advised that it does not hold any particular indicia on the face of a reference to necessarily be sufficient – the indicia are simply considered as a part of the totality of the circumstances.

Two prior panel decisions that the POP designated as precedential are also noteworthy because they addressed the issue of the Board’s discretion to decide not to institute a trial. In Valve Corporation v. Electronic Scripting Products, Inc., IPR2019-00064, -00065, -00085 (May 2019; Paper 10, designated precedential August 2019), the PTAB addressed the issue of the PTAB’s discretion to not institute a trial under AIA § 314(a). Notwithstanding that petitioner had not previously challenged the patent, the Board, applying the factors set out in General Plastic Co. v. Canon KK 1PR2016-01357 (September 6, 2017, Paper 19, precedential), found the petitions were serial and repetitive, and thus denied institution. In doing so, the Board determined that the first General Plastic factor (“whether the same petitioner previously filed a petition directed to the same claims of the same patent”) applied to petitioner because petitioner joined a previously instituted IPR. The Board’s application of the General Plastic factors is not restricted to the factual scenario in which a single petitioner has filed multiple petitions.

The POP also designated an opinion as precedential addressing §§ 314(a) and 325(d), NHK Spring Co. Ltd. v. Intra-Plex Technologies, Inc, IPR2018-00752, (September 2018; Paper 8, designated precedential May 2019). In exercising its discretion and denying institution, the NHK Spring decision notes that there was no intent to limit discretion under § 314(a), such that it is encompassed by § 325(d). It explained that exercising its discretion to deny the Petition under § 325(d) did not preclude it from considering additional factors that favor denying institution under § 314(a).