Director Adopts Panel Opinion
A few weeks back, I explained that the new Arthrex rehearing option— to the Director of the USPTO —was a non-event for practitioners. Reason being, the Director cannot just unilaterally reverse decisions “just because” he/she likes or dislikes patents. Of course, any such decision would be reviewable on appeal by the Federal Circuit.
While I was initially concerned with such filings piling up during the tenure of an Acting Director, the Acting Director is able to perform these duties (and issue patents) for a limited period of time while a politically appointed Director is seated. At least for now, that is how such rehearings will be decided.
Yesterday, the Acting Director issued his first two decisions, adopting the panel decisions in each as the final decision of the agency.
The first two Director Rehearing Requests (IPR2020-00081 and IPR2020-00320) were filed the week of July 6th. The decisions denying those requests were issued yesterday, unlike a typical request to a panel that can remain pending for months (and in some cases longer). The Director decision did not provide reasoning, akin to a Rule 36 CAFC affirmance, stating (here):
It is ORDERED that the request for Director review is denied; and
FURTHER ORDERED that the Patent Trial and Appeal Board’s Final Written Decision in this case is the final decision of the agency.
So, for Appellants looking for a delay, the Director has a far easier path relative to the panel (that has to walk through all the arguments in a detailed decision). On the other hand, since the Director did not add to the record, this may be a better options for some. For example, those thinking about rehearing, but wary of digging themselves a deeper hole for appeal, may prefer this mechanism.