On June 21, 2021, the Supreme Court held the Director of the USPTO “may review final PTAB decisions and, upon review, may issue decisions himself on behalf of the Board.”  United States v. Arthrex, Inc., 141 S. Ct. 1970, 1987 (2021) (holding that 35 U.S.C. § 6(c)—“Only the Patent Trial and Appeal Board may grant rehearings”—cannot be constitutionally enforced against the Director for inter partes review proceedings).  In this way, the agency’s decisions now have the imprimatur of the President-appointed and Senate-confirmed Director, otherwise eliminating a constitutional infirmity under the Appointments Clause. U.S. Constitution, Art. II, § 2, cl. 2; see Arthrex, 141 S. Ct. at 1985–86.  Of note, presently, Drew Hirshfeld, Commissioner for Patents, is performing the functions and duties of the Director and does not intend to defer Director review until a political appointee is confirmed.  PTAB Boardside Chat (July 1, 2021) at 28:00–50.

To facilitate the Director’s review, the USPTO has outlined an interim procedure that the agency expects to evolve over time.  See Arthrex Q&As, https://www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/arthrex-qas (July 20, 2021); USPTO Implementation of an Interim Director Review Process Following Arthrex, https://www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/uspto-implementation-interim-director-review.  Presently, the interim procedures apply only to final written decisions in inter partes review, post-grant review, and covered business method review proceedings, not institution decisions.  PTAB Boardside Chat (July 1, 2021) at 31:44–32:38, 52:53–53:15.
Continue Reading Post-Arthrex Interim Procedure for Director Review of PTAB Decisions

On June 21, 2021, the Supreme Court held that “35 U.S.C. § 6(c) is unenforceable as applied to the Director insofar as it prevents the Director from reviewing the decisions of the [Patent Trial and Appeal Board] PTAB on his own.”  United States v. Arthrex, Inc., No. 19-1434 slip op. at 22 (U.S. June

In an inter partes review proceeding, the petitioner first files a petition to challenge the validity of a patent. In response to the petition, the patent owner can file a POPR. Typically, the PTAB then decides whether to institute an IPR trial. In recent years, the rules have provided petitioners with an option to reply to the POPR. But such replies are not available as a matter of right—petitioners must request leave to file from the PTAB.

The PTAB has discretion to either grant or deny the request, depending on whether the request satisfies “a showing of good cause” under 37 C.F.R. § 42.108(c). If the PTAB grants the request, then typically, the petitioner and patent owner both receive authorization to file another brief paper, usually around five pages, before the PTAB issues an institution decision.

To date, it has not been clear what qualifies as “good cause” when a petitioner decides to reply to the POPR. Is the filing of a reply a strong predictor of the institution decision? We analyzed the role of petitioners’ replies to POPRs in recent PTAB proceedings, and our research provides a fresh view on the replies’ impact on corresponding institution decisions. In addition, our findings include updated practice tips for IPR practitioners.


Continue Reading What Qualifies as a Good “Good Cause” When Responding to a Patent Owner’s Preliminary Response?

We have previously written about the Patent Trial and Appeal Board’s (“PTAB”) precedential decision in Apple Inc. v. Fintiv, Inc., which set forth six factors the PTAB will consider when assessing whether to discretionarily deny an IPR petition in light of co-pending district court litigation.  Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020).  The PTAB has been applying the Fintiv factors in subsequent IPRs, many of which involve a stayed district court litigation.  The PTAB has now designated as precedential a decision instituting IPR in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020).  In this IPR, although the co-pending district court case was not stayed, Sotera Wireless (“Sotera”) filed a stipulation relinquishing all potentially duplicative arguments.  The PTAB allowed the IPR to proceed, noting that the stipulation avoided duplication and prevented conflicting results, chief components of the Fintiv factors.  More detail on this decision is below.
Continue Reading One More Tool to Avoid Fintiv IPR Denial: File A Stipulation in District Court Relinquishing Potentially Duplicative Arguments

On December 4, 2020, the Board designated three cases from October as precedential. Together, the rulings help understand the Board’s approach to both serial challenges to issued patents and application of 35 U.S.C. § 315’s limitations on proceedings. Two of the newly precedential decisions address the real party in interest (“RPI”) requirement and the third concerns follow-on petitions and joinder motions. See RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (P.T.A.B. Oct. 2, 2020) (“RPX”); Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (P.T.A.B. Oct. 28, 2020) (“Apple v. Uniloc”); SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (P.T.A.B. Oct. 6, 2020) (“SharkNinja”).Read more about these decisions below.
Continue Reading PTAB designates three precedential cases on Section 315’s time-bar and estoppel provisions

Since the start of post-grant proceedings, the Patent Office has published a Patent Trial Practice Guide to provide a framework for conducting those proceedings, including setting out the structure and times for taking action in each of the new proceedings (e.g., Inter Partes Review and Post Grant Review). The first Trial Practice Guide issued in August 2012, and updates were issued in August 2018, July 2019, and November 2019 (Consolidated Trial Practice Guide).  To guide post-grant practice, the Patent Office has also designated more than 40 decisions as precedential or informative. A topic of continued interest is the Patent Office’s practice surrounding its decision whether to institute a post-grant proceeding after a petition is filed.

Recently, the Patent and Trademark Office issued a Federal Register notice regarding a Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board. The full text of the notice can also be found in PDF format here and here.
Continue Reading PTAB Seeks Comments On Its Approach To Institution Decisions

In Uniloc 2017 LLC v. Hulu, LLC, No. 2019-1686 (Fed. Cir. July 22, 2020), the Federal Circuit considered whether the AIA permits the PTAB to reject substitute claims proposed during an IPR for patent ineligibility under § 101.
Continue Reading Federal Circuit confirms that the PTAB can consider the patent eligibility of substitute claims proposed during an IPR

On Thursday, June 11, 2020, the PTAB designated one decision as precedential and three decisions as informative, on issues including: 1) the statutory scope of confidential settlement agreements, 2) design patent ornamentality, 3) terminating a proceeding having a pending motion to amend, and 4) use of confidential information at a hearing.
Continue Reading PTAB Issues Precedential Decision to Clarify 35 U.S.C. § 317(b) Collateral Agreements, and Three Informative Decisions

The Patent Trial and Appeal Board (“the Board”) recently designated Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020), as precedential.  The decision provides practitioners a six-factor analysis that the Board will employ when assessing whether to apply its discretion to deny institution when there is co-pending district court litigation. 
Continue Reading PTAB Precedential Decision Offers Guidance on Discretionary Denials of Institution in Light of Co-Pending Litigations

In a previous post, we reported that the PTAB’s Precedential Opinion Panel (POP) tackled issue joinder in Proppant Express Investments v. Oren TechsIPR2018-00914, Paper 24 at 2.

As background, in Proppant, the POP addressed the following issues:

  1. Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
  2. Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
  3. Does the existence of a time bar under § 315(b), or any other relevant facts, have any impact on the first two questions?

The POP determined that § 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.”  IPR2018-00914, Paper 38, at 4.

In Facebook, Inc., v. Windy City Innovations, LLC, the Federal Circuit reversed the POP opinion.  953 F.3d 1313 (Fed. Cir. 2020) (the “Decision”).  Specifically, the court held that “[t]he clear and unambiguous text of § 315(c) does not authorize same-party joinder, and does not authorize the joinder of new issues.”  Decision at 1322. 
Continue Reading Federal Circuit Reverses PTAB’s Precedential Opinion Panel on Aspects of Joinder