The USPTO has now issued a final rule package (here) to implement the Director Review process in AIA trial proceedings. The final rules follows the Notice of Proposed Rulemaking (NPRM) of April 16th and responsive public comments.
Based on the comments, the final rule proposal has been
Last week the Director vacated IPR denials based upon a misapplication of Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 (Apr. 2, 2019) (precedential). As a reminder, Valve, extended the discretionary denial practices set out in General Plastic of so-called “follow-on” petitions of a same party to that of related parties having a “significant relationship.” However, over the years the unique scenario of Valve started to be argued as applicable to more typical scenarios where different parties happened to be litigating the same patent in different, unrelated suits.
Most recently, the Valve drift ensnared an IPR petitioners Honda, GM and Ford based on earlier filings of a co-defendant (Volkswagen). In last week’s Director Review Order the Director made clear that where there are different accused products in different court proceedings there is not a “significant relationship” between filers outside of “relevant or extenuating facts or circumstances.”Continue Reading PTAB Recalibrates Related Party Analysis
As of Monday July 24th, the USPTO has discontinued the use of its Precedential-Opinion-Panel (POP) in favor of the interim Director Review (DR). This move was not unexpected as the POP panel (an early attempt to cure the Arthrex infirmity with partial Director oversight) was effectively replaced by the SCOTUS decision in Arthrex (Director Only).
In relying only on the DR moving forward, the PTAB has also decided to expand it to AIA institution decisions.Continue Reading PTAB Drops POP Panel Review Option
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
Back in March, I explained that the Opensky mess needed to be immediately checked by the USPTO. The legitimacy of the PTAB is at stake when when profiteers are actively conspiring to abuse the IPR process by offering to deliberately file papers for an improper purposes. The situation called for swift and decisive correction…..but this is the federal government. So, we waited for a new Director to be appointed, and then, largely unnecessary amicus briefing for such a unique fact pattern.
Six months later (IPR is effectively done except for the Final Written Decision), we finally have a determination out of the Director. But, the outcome is far from satisfying for anyone that is hoping for the PTAB to start policing bad actors akin to an Article III Court.Continue Reading Its Time for the PTAB to Stop Playing Good Cop
I’ve pointed out a few times now that the IPR filings of OpenSky are inevitably doomed. There is just too much evidence of bad faith for there to be any other outcome. And as I also pointed, out the POP request has been pending since January, presumably awaiting the new Director to settle the issue. Today the POP Request was finally denied, strangely, in favor of a Director Review.
I know what you are thinking. “Wait a minute, there is Director Review of institution decisions? Since when!?”
Since a mandamus petition sent the agency scrambling to fix this constitutional infirmity.Continue Reading Director Review Now Possible For PTAB Institution Decisions?
This past Friday, Director Vidal announced that the agency will be keeping the current interim Director review process that was put in place post-Arthrex. The Director added that the process (or some variant thereof) will be formalized via Notice-and-Comment Rulemaking after collecting stakeholder input. In the