Administrative Procedure Act

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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

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

Unified Patents Insights Webinar This Thursday

This Thursday April 1st, Unified Patent’s Insight Webinar series (free) will present its April offering at 12PM(EST):

The PTAB and the Western Way: How Judge Albright’s Court and the Board Interact
In the webinar, the panel will  explore the impact of the Western District of Texas on the patent…

Legislative Fix Enacted for Trademarks

On March 1st, the Supreme Court will hear its fifth PTAB related case in United States v. Arthrex Inc.  At issue in this latest dispute is whether, for purposes of the Constitution’s appointments clause, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the president with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head. While this may sound like a boring legal debate for administrative law nerds (and it kinda is), there are some real world consequences for us super cool PTAB practitioners.

But, as made clear by a recent change to the Trademark statutes in the Trademark Monetization Act (TMA), it all may end in a fizzle for PTAB practitioners.
Continue Reading Legislative Cure Provided for Potential Arthrex Deficiency

Agency Left to Defend Unsettled Legacy

Upon taking the reins at the USPTO, Director Iancu made clear that he believed the Patent Trial & Appeal Board (PTAB) was cancelling too many patent claims in AIA trial proceedings.  Of course the PTAB was simply implementing the statutory framework given to it by Congress – and the Federal Circuit was largely affirming the PTAB’s work. So, the only possible “fix” for the Director was to rebalance the rules/practice to his liking (i.e., in favor of patent owners).

And he changed as much as he could, as fast as he could.
Continue Reading Activist Director Moves On – What’s Next for the PTAB?