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Understanding the Different Types of Patent Trial and Appeal Board Opinions

In the wake of the Patent Trial & Appeal Board’s First Precedential OpinionSecurebuy, LLC v.Cardinal Commerce Corporation, No. CBM 2014-00035, which denied institution of a covered business method review proceeding based on a prior-filed civil suit, it may be helpful to understand what a Precedential Opinion is and how an opinion is made Precedential.

According to the Board’s Standard Operating Procedure, the Board issues three types of opinions: Routine, Informative, and Precedential. Most opinions are Routine. Routine opinions may have some persuasive value but should be cited sparingly, for example, to illustrate a relevant fact. Informative opinions are more persuasive than Routine opinions and may be cited, for example, to illustrate patent- or legal-related norms or best practices.

While Routine and Informative opinions are binding law of the respective cases, as the names suggest, neither Routine nor Informative opinions are binding on the Board in future opinions. Precedential opinions, on the other hand, are binding on the Board unless the Precedential opinion is modified by the Federal Circuit, inconsistent with the Supreme Court or the Federal Circuit, overruled by a subsequent expanded panel, or overturned by statute.

To nominate an opinion to be made Precedential, a written request must be submitted to the Chief Administrative Patent Judge with accompanying reasons. The appellant, the patentee, the petitioner, or a third party may submit the request within 60 days of issuance of the opinion. Opinions may be made precedential for any of a variety of reasons; opinions resolving conflicts or addressing novel questions are provided heightened consideration.

The SecureBuy opinion resolves an actual or apparent conflict between 35 USC § 325(a)(1) and 37 C.F.R. § 42.300(a), which appeared to exempt covered business method review proceedings from 35 USC § 325(a)(1), and provides guidance for other pending covered business method review proceedings and potential appellants or petitioners.

© Copyright 2020 Armstrong Teasdale LLP. All rights reserved National Law Review, Volume IV, Number 230


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