314(a)

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Unnecessarily Ambitious

Late last week the USPTO issued an Advanced Notice of Proposed Rulemaking (ANPRM) that floated numerous rule proposals and requests for feedback — too numerous. Proposals addressing current 314(a) and 325(d) practices were not only expected, but long overdue. While these expected proposals were included in the sprawling Notice, the rule-making process will undoubtedly be bogged down by the remaining collection of controversial ideas and administrative over-reach.

Keep in mind that 314(a) Fintiv practices could soon be struck down as improper circumvention of APA rule-making. Stalling the issuance of those rules for at least another 12-18 months – if not longer – seems like a bad idea. My guess is political pressure from outside the agency led to the laundry list of additional proposals. Especially as they relate to for-profit entities in the wake of the Open Sky debacle.

Regardless, of how or why the expansive ANPRM came to be, I’ll walk through each proposal/idea in detail below (ANPRM here)Continue Reading PTAB Rule Ideas – The Good, The Bad, & The Ugly

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Rule Effort Worthwhile?

Back in November of 2021, the Northern District of California dismissed an APA lawsuit filed by a number of large companies seeking to challenge the PTAB’s NHK-Fintiv practices. At that time, I opined that the Court had overlooked some of the key APA arguments, and that the Federal Circuit would likely offer a more nuanced view. Yesterday, the Court, reversed-in-part and remanded for further consideration of the APA challenge.

Of particular interest, the Federal Circuit found that the APA challenge to the NHK-Fintiv practices (i.e., that such practices were unlawful absent notice and comment rulemaking) should not have been dismissed for lack of standing. While this may have been a very exciting development a year or so back, it is a bit anticlimactic in 2023.Continue Reading PTAB Fintiv Practices On the Way Out?

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Fintiv Not a Single Step Framework

USPTO Director Vidal has issued a number of sua sponte Director decisions since her arrival. I haven’t bothered discussing them here as the majority are directed to rather unique 314(a) fact patterns that are unlikely to repeat going forward.

Today, in Commscope Technologies LLC v. Dali Wireless the Director issued her most recent decision on 314(a) practices. This decision, while similar in character to the previous decisions, shows the Director’s interest in assuring that her 314(a) framework is correctly followed.Continue Reading Director Wants Full Fintiv Analysis from PTAB

PTAB-legislation

Estoppel Future Uncertain

As pointed out last month, the SCOTUS has sought the Solicitor General’s input in Apple et al., v. California Institute of Technology. If the case is taken up, the Court will consider limiting the scope of IPR estoppel to art that was included in the petition, and that art which reasonably could have been raised “during the IPR.”

At present, “reasonably could have raised” is assessed at the time the petition is drafted (i.e., what could have been included in the petition), not what could have been included in the later trial (which is effectively nothing). While it is far from certain whether the Court will take the case — let alone narrow estoppel— petitioners might still consider their stipulation wording until this dispute is settled.Continue Reading Sotera Stipulations to Haunt PTAB Petitioners?

Trial Dates & Backward Looking Stats Unreliable?

This past November, Senator Tillis has cautioned the agency that “it is difficult to imagine any plausible justification for the continued reliance on the demonstrably inaccurate trial dates set by the Waco Division.” Fintiv practices have remained unchanged since that time.

More recently, the WDTX had occasion to consider the competing schedule of another forum. Finding that the WDTX was faster, it looked to the realities of the other forum’s scheduling.Continue Reading WDTX Looks at Average Time to Trial, Why Doesn’t the PTAB?

New Confirmation to Drive New Policy?

At long last, the Senate has finally confirmed Kathy Vidal as the new PTO Director….just in time to tender her resignation before the next administration!  Ok, maybe not quite that late.  But considering it can take close to two years for any Notice and Comment Rulemaking to get through the system, these appointment delays can seriously hamstring a Director’s ability to drive any significant policy change.

So, the new Director needs to hit the ground running.  And, as usual, the PTAB offers some early hurdles.
Continue Reading Finally, a New PTO Director. Now What?

Virtual CLE Program January 24 – 27th

IPWatchdog’s PTAB Masters 2022 (PTAB-palooza if you prefer), is coming next week!

The free, 4-day CLE program is virtual, and will focus on the PTAB from the viewpoint of both the patent owner and petitioners challenging patents.  Topics will explore political and legislative developments impacting the agency in…

Stark and Vidal Nominations Head to Finish Line

Tomorrow morning, the Senate Judiciary will pass the nominations of 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, to the…