CAFC & USPTO Director Nomination Hearings

At 10AM today, the Senate Judiciary Committee will hold nomination hearings for Leonard P. Stark to be United States Circuit Judge for the Federal Circuit, and Katherine Vidal to be Under Secretary of Commerce for Intellectual Property & Director of the United States Patent and Trademark Office.  It appears that Judge Stark is up first on Panel 1.  Panel 2 follows with district court nominations, and Ms. Vidal.

Watch live (here)

Don’t expect any of the exchanges to be all that insightful, or confrontational.  It will be the usual qualified, non-answers and occasional softball question.  There seems to be some expectations that Ms. Vidal will be grilled over her view of discretionary PTAB practices, don’t count on it.  While I am sure the topic will be raised, it’s far too esoteric an issue to stall a nomination to an agency of little interest to the general voting public.  And, Ms. Vidal is certainly smart enough to toe the line.  That said, given the vocal support of Leahy for the Director nominee, and the less than enthusiastic reception of Tillis, its not hard to read the PTAB tea leaves.

Both nominations appear primed for confirmation.

Upcoming PTAB CLE

ACI’s inaugural “PTAB Briefing” arrives in two weeks.  The program will provide an in depth-discussions and year-end analysis of the most significant developments impacting PTAB practice as well as future forecasts for 2022.

I will be speaking on the panel entitled: Think Tank: Recent Developments & the Future Direction of IPR ProceedingsThis panel will cover pending legislative initiatives, possible impact of the new Director, and expected practice changes to come.  I hope to see you there.

Inbox me if you would like a free pass to the program.

Appeal Bar Deemed to Bar APA Suit

Back in September of 2020, a number of large tech companies sued the USPTO for violating the APA by denying IPR petitions on the basis of a competing trial date. More specifically, the suit argued that the so-called NHK-Fintiv practice — implemented without notice and comment rulemaking — was in violation of established APA practices.  Since filing, the Court seemed quite interested in that argument at an earlier oral hearing on summary judgment.  Oddly, the case was dismissed yesterday based upon the 314(d) appeal bar.

Continue Reading NHK-Fintiv APA Suit Ends Abruptly

Draft Bill Dead on Arrival

Last week, the “Restoring America’s Leadership in Innovation Act” was again floated by Republican Congressman Thomas Massie (KY).  The same draft Bill was previously released in 2018 and 2020.  Backed only by a handful of relatively powerless House Republicans, the Bill proposes a number of highly controversial measures.  But, if you are going to dream, dream big! Continue Reading Make Patent Trolls Great Again!

Senator Tillis Warns Agency, Requests Report on Fintiv Practices

As I pointed out in my previous post, the Senate Judiciary Committee has targeted WDTX venue practice as unseemly and inappropriate.  In a two-pronged attack on the WDTX, Senator Tillis is now warning the PTAB to stop relying on unrealistic WDTX trial dates in its Fintiv analyses.  This separate letter to Acting USPTO Director Hirshfeld is signed only by Senator Tillis as he supports Fintiv practices (Leahy does not).

In the letter, Senator Tillis points out that a far more predictable indicator of the ultimate trial date is average time to trial, not the “aggressive trial dates” set by judge Albright. Continue Reading PTAB Warned to Disregard Unrealistic WDTX Trial Schedules

Senators Excoriate Perceived WDTX Venue Abuses

Back in September, I previewed the PTAB reform discussions that eventually issued as the Restoring the America Invents Act.  The Act, clearly a rebuke of the Iancu administration’s changes to AIA trial practices, also included a provision encouraging district court stays in view of PTAB challenges. The unspoken concern behind the stay provision is the growth of patent litigation in the WDTX . If there was any doubt about that rationale, the Senate Judiciary has just explicitly put WDTX’s Judge Albright directly in its cross-hairs. Continue Reading Senate Judiciary Characterizes WDTX Practices as Unseemly & Inappropriate

New Mechanism Produces Rare Win

Earlier this week, the PTAB issued a rare win for a patent owner in an Director Rehearing.  The Rehearing option, provided after the SCOTUS decision in Arthrex, enables a party to request the Director of the USPTO review the record prior to appeal to the Federal Circuit. To date, this option has not been any more successful than a typical panel rehearing request (not surprisingly).  This week’s decision may shed some light on the type of issues that may catch the Director’s eye. Continue Reading PTAB Grants Director Rehearing Request

IAM’s IP 2021 – November 2- 3rd  (virtual)

Following a year of global change and pandemic-related disruption, the Biden administration’s position on IP policy is being closely scrutinized by the patent community. With key leadership positions still awaiting candidate nominations, what is on the horizon for patent law and policy in 2021 and beyond?

IAM’s IP 2021, which will be hosted virtually on Zoom on 2-3 November, will provide IP experts with an opportunity to explore the US legal and political climate, and the direct impact these have on IP policy.  The agenda (here) includes Keeping Up With The PTAB (far more interesting than the Kardashians), and will include PTAB Chief Judge Scott Boalick, practitioners and academics.  I hope you are able to tune in for what is always an informative event.

Register (here)

Federal Circuit Gives Short Shrift to Bias Arguments

A number of due process theories have been floated over the past few months as the “next big thing” in potential constitutional challenges to the PTAB.  Some have been arguing that PTAB judges are financially incentivized to institute  Others have pointed out that judges that institute AIA trials are biased in favor of cancelling claims given it is the very same judges on the back-end.

Yesterday, the Federal Circuit shot down both theories. Continue Reading Due Process Argument Against PTAB Funding Structure Fails

Abusive Reexam Relief

Late last month, in In re Vivint, Inc., the Federal Circuit tackled the question of whether a post-issuance review proceeding (in this case, ex parte reexamination (“EPR”)) was available to a challenger that repeatedly filed another post-issuance review proceeding (in this case, inter partes review (“IPR”)) to forward the very same argument. The court held that, while the EPR request had shown substantial new questions of patentability, “the Patent Office abused its discretion and acted arbitrarily and capriciously under § 325(d).” As such the court vacated the decision and remanded to the Patent Office (“PTO”) with instructions to dismiss.

But, don’t expect this decision to be much more than a corner case. Continue Reading Reexam After Failed IPR?