On August 2, 2021, the USPTO issued its first Director review decisions subsequent to the Supreme Court decision in Arthrex and the PTO's implementation of an interim procedure whereby review of a PTAB final written decision in an inter partes, post-grant, or covered business method review may be initiated sua sponte by Director or requested by a party to a PTAB proceeding. The order in each of the cases (IPR2020-00081 and IPR2020-00320) denied the request for Director review and provided that "the PTAB's Final Written Decision in this case is the final decision of the agency."
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On June 29, 2021, the USPTO issued guidance on interim Director review process in view of the Supreme Court's decision in US v. Arthrex. The PTO now provides a process by which a party can request review by the Director of PTAB final written decision. A party requesting such review must: (1) enter a Request for Rehearing by the Director into PTAB E2E; and (2) submit a notification of the Request for Rehearing by the Director to the Office by email to Director_PTABDecision_Review@uspto.gov copying counsel for all parties by email.
PTAB designates the following cases as precedential:
Sotera Wireless, Inc. v. Masimo Corp. (Dec. 1, 2020) and Snap, Inc. v. SRK Tech. LLC (Oct. 21, 2020) that apply the Fintiv factors. In Sotera, the decision explains that the petitioner's broad stipulation not to pursue in district court any ground that it raised, or could have raised, in the IPR weighs strongly in favor of institution. In Snap, the decision explains that a district court stay that would remain in place until an IPR final written decision weighs strongly in favor of institution. The Fintiv factors used to decide whether to deny institution under 35 USC 314(a) are: (1) whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; (2) proximity of the court's trial date to Board's projected statutory deadline for a final written decision; (3) investment in parallel proceeding by court and parties; (4) overlap between issues raised in petition and in parallel proceeding; (5) whether petitioner and defendant in parallel proceeding are the same party; and (6) other circumstances that impact Board's exercise of discretion, including the merits. RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020), SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11(Oct. 6, 2020), and Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020). In RPX, the petitioner was time-barred because the petitioner's client was an unnamed real party-in-interest that had been served with an infringement complaint more than one year before filing the petition. In SharkNinja, decision held that while petitioners must identify any real parties-in-interest and must do so in good faith, the Board does not need to resolve a dispute regarding a possible real party-in-interest if it would not impact the Board's institution decision. In Apple, the decision applies the factors set forth in General Plastic to a copycat petition that the petitioner filed against the challenged patent after its first petition was denied institution. On Dec. 18, 2020, the USPTO published a Final Rule regarding burdens of persuasion on motions to amend in AIA trial proceedings before the PTAB. According to the Final Rule, the patent owner has the burden of showing that a motion to amend complies with statutory and regulatory requirements for such a motion, and the petitioner has the burden of showing unpatentability of substitute claims proposed in a motion to amend.
PTO released new guidelines relating to AIA trial proceedings: (1) If PTAB institutes a review, trial will proceed on all challenged claims and on all asserted grounds of unpatentability; (2) provides automatic sur-replies; (3) eliminates the presumption that a genuine issue of material fact is viewed in light most favorable to petitioner for deciding institution; (4) forbids filing new evidence with a sur-reply, except for deposition transcripts of cross-exam of any reply witness. The rules do not apply retroactively.
U.S. Supreme Court granted cert on Federal Circuit's ruling that PTAB APJs are appointed in violation of the Appointments Clause of Article II. The Appointments Clause requires that "principal officers" in the government be appointed by the President with the advice and consent of the Senate while inferior officers may be appointed by a department head. APJs are appointed by the Secretary of Commerce in consultation with the PTO Director.
The Supreme Court has presented two questions: (1) whether, for purposes of the Appointments Clause, APJs 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 (2) whether, if APJs are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 USC 7513(a) to those judges. On July 6, 2020, the Precedential Opinion Panel (POP) issued a decision holding that the Board should not raise its own ground of unpatentability against proposed substitute claims in deciding a motion to amend. Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600 (P.T.A.B. July 6, 2020) (Paper 67). According to the POP, inter partes reviews are adversarial proceedings and the Board relies on the parties to bring the most relevant arguments and evidence to its attention. The Board should raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, only in the rare circumstances where the adversarial process fails.
On May 6, 2020, the Federal Circuit issued an order denying Caterpillar's motion to vacate and remand for a new hearing before a differently constituted panel in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). In denying the motion, the court reasoned that the panel members became constitutional prior to issuing the final written decision. Caterpillar Paving Products Inc. v. Wirtgen Am., Inc., No. 2020-1261 (Fed. Cir.). Order available here.
PTAB designated Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020) as precedential. The order discusses the six factors the PTAB considers in determining whether to exercise its discretion to institute review when there is a related proceeding pending in district court. These include: (1) whether the court granted a stay or evidence exits that one may be granted if proceeding is instituted (2) proximity of the court's trial date to the Board's projected statutory deadline for a final written decision (3) investment in parallel proceeding by the court and the parties (4) overlap between issues raised in the petition and in the parallel proceeding (5) whether the petitioner and the defendant in the parallel proceeding are the same party; and (6) other circumstances that impact the Board's exercise of discretion, including the merits.
The Board also de-designated Oracle Corp. v. Click-to-Call Techs. LP, IPR2013-00312, Paper 26 (Oct. 30, 2013) in view of the Board's Precedential Opinion Panel (POP) decision in GoPro, Inc. v. 360Heros, Inc., IPR2018-01734, Paper 38 (Aug. 23, 2019) On April 20, 2020, the U.S. Supreme Court held that Section 314(d) precludes judicial review of PTO's application of Section 315(b)'s time bar. Thryv, Inc. v. Click-to-Call Tech., LP, No. 18-916 (April 20, 2020).
PTAB determined that Section 315(b) did not bar IPR institution because "a complaint dismissed without prejudice does not trigger section 315(b)'s one-year limit." Federal Circuit dismissed Click-to-Call's appeal of the PTAB's decision. Click-to-Call filed a writ and the Supreme Court vacated the judgment and remanded for further proceedings consistent with Cuozzo Speed Tech. v. Lee. Federal Circuit again dismissed the appeal and Click-to-Call requested an en banc hearing. Prior to the hearing, the Federal Circuit issued an en banc decision in Wi-Fi One in which it overruled Achates to find that time-bar determinations under 315(b) are appealable. The High Court granted Thryv's cert petition. In vacating the Federal Circuit's decision and remanding with instructions to dismiss for lack of appellate jurisdiction, the Court reasoned that Congress designed the IPR to weed out bad patent claims efficiently and the purpose of Section 315(b) is to minimize burdensome overlap between IPR and patent-infringement litigation. In his dissent, Justice Gorsuch stated that the majority's opinion takes a flawed premise that the Constitution permits an agency to revoke an inventor's property right in an issued patent. Full text of the opinion is available here. |
Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.
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