PTAB Clarifies 315(B) Positions With Informative Opinions

Board Continues to Provide Helpful Feedback on Best Practices

The Patent Trial & Appeal Board (PTAB) has designated the following decisions, which involve 35 U.S.C. § 315(b), as informative.

Luv N’ Care, Ltd. v. McGinley, Case IPR2017-01216 (PTAB Sept. 18, 2017) (Paper 13). In this decision, the Board denied institution after determining that the Petition was not timely filed under 35 U.S.C. § 315(b), because payment was not received by the Office until after the date the Petition was filed. The Board also denied Petitioner’s motion to assign an earlier filing date to the Petition after determining that Petitioner failed to show good cause for waiving the fee requirement.

Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals, Inc., Case IPR2014-00360 (PTAB June 27, 2014) (Paper 15). In this decision, the Board determined that the Petitioner was timely filed under 35 U.S.C. § 315(b) because filing a motion to amend the complaint in district court, with an amended complaint attached, does not constitute service.

As a reminder, an “informative” opinion, while not binding PTAB authority, illustrates norms of Board decision-making for the public, the patent examining corps, and future Board panels. Informative opinions may explain best practices, address recurring problems, identify developing areas of the law, exemplify types of decisions under-represented in commercial case reporting services, or report cases of public interest. It is worth noting that 315(b) issues are now subject to appeal (after WiFi One).