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.
The two-page decision (here) explains that:
Director review should be granted as to Patent Owner’s first argument because “[p]atent claims are awarded priority on a claim-by-claim basis based on the disclosure in the priority applications,” Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 718 (Fed. Cir. 2008), and the Board’s Decision did not specifically address claims 5 and 17.
Here, the Director determined a question of law pertaining to a priority analysis was not adequately explained, remanding the case back to the panel. Specifically that no support of a broadly claimed genus (base claim) does not necessarily foreclose support for a specifically claimed species.
The takeaway is not that the Director is less likely to revisit questions of fact, but, clear cut issues — as is the case with any rehearing — present the most promising path to success.