Vidal Memo Withdrawn
As expected, the USPTO has now rescinded the June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (Memorandum) issued by Former Director Vidal. The change is the first in many expected recalibrations of the new administration designed to return practices back to that of the previous Trump appointees (if not beyond).
Parties to post-grant proceedings are now to PTAB precedent for guidance, including Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A).
What this means in simpler terms is:
- A PTAB filing concurrent with an ITC case is subject to 314(a) denial again (and, in my view, will almost certainly be decided that way).
- There is no longer a compelling merits factor to offset Fintiv factors.
- PTAB judges may rely again on a trial date as opposed to average time to trial.
- Sotera stipulations are still viable
The notice also renders void previous Director Review decisions that relied on the Memorandum (a significant number of Director Review decisions under former Director Vidal). The notice states that such decisions (or portions thereof) shall not be binding or persuasive on the PTAB.