Administrative Procedure Act

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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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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…

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

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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

October Webinar to Debrief on Leahy Bill

Senator Patrick Leahy (D) VT and Senator John Cornyn (R) TX have jointly drafted a new bill entitled the “Restoring the America Invents Act.” The Bill proposes to roll-back recent directives and policies of former USPTO Director Iancu, most notably discretionary denials of AIA trial proceedings in view…

PTAB Master Class Tomorrow!

Tomorrow, the PTAB Bar Association will kick-off its annual conference. The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of Patent Trial Appeal Board (PTAB) best practices, recent developments and trends, policy considerations, and more.  This year, we are in-person only!

The 3-day…

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.
Continue Reading Director Rehearing Decisions: No Path for Delay

Arthrex Information Updated

The USPTO requested feedback on the interim Director review process and, in response to that feedback, has updated the Arthrex Q&As. In response to questions from the public, the current update revises several existing Q&As and adds new Q&As to clarify certain aspects of the interim Director review process. For example, the current update clarifies information about party requests and explains the process used internally at the Office. …
Continue Reading PTAB Clarifies Director Rehearing Details