"Pop Change" No Longer Means Buying Soda in Ohio: Keeping up with the Precedential Opinion Panel in 2019

For many practitioners, it seems that change is the only certainty at the Patent Trial and Appeal Board. And only five months into the year, change in 2019 has become more certain than ever.

Late last year, the PTAB revamped its standard operating procedures in a document known as Revised SOP2. With these revisions, the PTAB created the “Precedential Opinion Panel” or “POP.” The POP is tasked, in part, with rehearing matters of “exceptional importance” in pending trials and appeals. By default, the POP members consist of the Director, the Commissioner for Patents, and the Chief Judge of the PTAB.

The Director has discretion to institute POP review. In most cases, the process begins with a party to a pending proceeding requesting a rehearing of an adverse order, following the procedures outlined in SOP2.

Requests that follow the procedures go to a “Screening Committee” comprised of POP members (the Director, the Commissioner for Patents, and the PTAB Chief Judge) or their designees. The Screening Committee considers all requests and forwards its recommendation to the Director. Based on the Screening Committee’s recommendation, the Director determines whether to convene the POP. If the Director decides to go forward, the POP will first enter an order notifying the public of that decision and identifying the composition of the panel. The POP’s order will also identify the issues the POP intends to resolve. The POP has the authority to request additional briefing on identified issues, the discretion to order oral hearings, and may authorize the filing of amicus briefs in “appropriate circumstances.” A party cannot appeal a decision not to grant POP review.

The POP ultimately will render a decision resolving the identified issues in that case. That decision may either be designated as “precedential,” “informative,” or “routine.” Routine decisions are binding in the case in which they are made but are not otherwise binding authority. A precedential decision is binding on future PTAB panels considering similar facts or issues, unless and until the decision is superseded by later binding authority. An informative decision is not binding but articulates the PTAB’s recommended approach to certain recurring issues. Because the POP is supposed to preside over matters of “exceptional importance,” it may seem counterintuitive that the POP would issue routine decisions. Nevertheless, the revised SOP2 recognizes that there may be situations in which a decision “in retrospect is no longer of precedent-setting importance,” and, therefore, may not merit a precedential designation.

The POP review process has been quite active through the first half of 2019. In early December 2018, the Director ordered the first POP review in the inter partes review Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914. That POP review focused on joinder practice. In March 2019, the POP issued its first precedential order, concluding that 35 U.S.C. § 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding. The POP further concluded that the existence of a time bar under § 315(b) is one of several factors that may be considered when exercising discretion under § 315(c). In order to balance various considerations, including those raised by other statutes such as the time bar of § 315(b), the PTAB will exercise this discretion only in limited circumstances—namely, where fairness requires it and to avoid undue prejudice to a party.

Soon after the dust from Proppant settled, the Director ordered another POP review. The April 2019 order in Hulu LLC v. Soundview Innovations LLC, IPR2018-01039 determined that POP would address the following issue: What is required for a petitioner to establish that an asserted reference qualifies as a printed publication at the institution stage? The parties and amici were authorized to submit briefing. In general, the amicus briefs filed in early May cautioned the PTAB against setting high hurdles for establishing the printed publication status of references at an early stage of the proceeding.

On the heels of Hulu, the Director ordered yet another POP review on May 10, 2019, in GoPro, Inc. v. 360 Heroes, Inc., IPR2018-01754. This time, the POP will tackle the issue of time bars and, more specifically, whether the service of a pleading asserting a claim alleging infringement, where the serving party lacks standing to sue or the pleading is otherwise deficient, triggers the one-year period for a petitioner to file a petition under § 315(b). Amicus briefs are due at the end of the week.

As the AIA trial process continues to mature, the Patent Office strives to provide binding guidance to the public and practitioners. And if the first half of 2019 provides any indication, the POP review process will be a “pop”ular path to promote both change and certainty.