PTAB: If a prosecution bar doesn’t say it applies to PTAB proceedings, then it doesn’t.

I’ve posted several times about how it’s best not to leave the scope of prosecution bars (what subject matter; how long; and what activities) to courts to decide because they may not agree with your (silent) views.  Make it explicit.  The PTAB recently held, in a somewhat fact-based case, that a prosecution bar that precluded activities in “prosecution activities” did not stop a lawyer from being involved in an IPR proceeding.  (hat tip to patentdocs.)  The case, Google Inc. v. Jongerius Panoramic Tech. LLC (Cas IPR2013-00191) (Paper No. 50) is here.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.