Last week marked the first time that USPTO Director Vidal acted under the Revised Interim Director Review Process to order a Delegated Rehearing Panel to review a decision denying institution of inter partes review (IPR). In July, the USPTO established a Delegated Rehearing Panel process by which the Director may delegate for further consideration Director Review requests of Institution Decisions and Final Written Decisions. Last week, she did just that in DK Crown Holdings Inc. v. Diogenes Limited, IPR2023-00268, Paper 11 at 2 (PTAB Aug. 8, 2023). The Board issued its initial decision denying ..read more

In affirming final written decisions of the Patent Trial and Appeal Board (PTAB) in two inter partes reviews (IPRs), the Court of Appeals for the Federal Circuit (CAFC) ruled that only actual product sales count toward a showing of commercial success. Incept LLC v. Palette Life Sciences, Inc., 21-2063 (Fed. Cir. Aug. 16, 2023). Other distributions of products, such as replacements and free samples, the CAFC held, are not considered sales for purposes of establishing commercial success. Moreover, providing accounting information that does not clearly delineate between sales and other non-sales ..read more

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal recently altered a decision by the Patent Trial and Appeal Board (PTAB) to address the use of applicant admitted prior art (AAPA) in inter partes review (IPR) petitions. AAPA is art cited or described by an applicant in the patent application by, for example, describing a technology as “conventional” or “well-known.” The use of AAPA by a patent challenger in IPR petitions has evolved in recent years in light of decisions by the Federal Circuit and the USPTO’s own guidance on the topic. Director Vidal’s review decision provides usefu ..read more

Practice at the Patent Trial and Appeal Board (PTAB) has evolved at a breakneck pace during the tenure of U.S. Patent and Trademark Office Director Vidal. Her Fintiv memorandum rapidly altered practice surrounding a core issue — discretionary denials of PTAB proceedings, such as inter partes review (IPR) and post-grant review (PGR). Just over eight months into this new era, Director Vidal has closed, through a precedential sua sponte Director Review decision, what seemed to be an escape hatch for petitioners in the framework previously set forth in the memorandum. Commscope Techs. LLC v ..read more

More than two years have passed since the United States Patent and Trademark Office (USPTO) created the Legal Experience and Advancement Program (LEAP) to develop the skill of practitioners in presenting oral arguments to the Patent Trial and Appeal Board (PTAB). LEAP, which is available in both ex parte and post-grant proceedings, provides additional argument time for a requesting party represented by a practitioner with three or fewer substantive oral arguments in any federal tribunal, including the PTAB. The practitioner must be offered a “meaningful and substantive opportunity to argue,” b ..read more

The new director of the U.S. Patent and Trademark Office, Katherine Vidal, recently issued a memorandum clarifying the Patent Trial and Appeal Board (PTAB) application of Fintiv to discretionary denial of PTAB proceedings, such as inter partes review (IPR) and post grant review (PGR), under Fintiv. Key elements of the director’s new guidance are outlined below. When a party is accused of infringing a patent, it has become almost routine for the party to seek IPR or PGR of the patent. These proceedings have skyrocketed in popularity since their introduction almost a decade ago. One of the first ..read more

The Supreme Court rendered its decision in Arthrex v. Smith & Nephew back in June and now the impact of that decision is becoming more clear. Arthrex had challenged the constitutionality of the appointment of administrative patent judges (APJs) who make up the Patent Trial and Appeal Board (PTAB). The Court determined that, in order for the appointment of APJs to be constitutional, the decisions rendered by APJs must be subject to review by the Director of the USPTO. To comply with the decision, the USPTO created an interim procedure through which parties may petition to have a case rehear ..read more

In Qualcomm Inc. v. Intel Corp., the Federal Circuit held that Qualcomm was not afforded notice of, or an adequate opportunity to respond to, the Patent Trial and Appeal Board’s (PTAB’s) novel construction of an undisputed claim limitation.1 Thus, the court vacated the PTAB’s determination that Qualcomm’s patent was invalid.2 The Patent and the PTAB’s Hearing Qualcomm’s patent, U.S. Patent No. 9,608,675, is directed to generating a power tracking supply voltage.3 Intel petitioned for six inter partes reviews (IPRs) challenging the validity of the ’675 patent.4  The parties never disp ..read more

Last week, the Supreme Court issued its decision in United States v. Arthrex, Inc. As explained in more detail in our June 24, 2021 post, after holding that “the unreviewable authority wielded by APJs during inter partes review is incompatible with their ap­pointment by the Secretary to an inferior office,” the Court concluded that “the Director [must] have the discre­tion to review decisions rendered by APJs” in inter partes reviews (IPRs). Slip Op. at 19, 21. Indeed, the Court appears to suggest that the Director’s power to review decisions by the PTAB could be quite broad. For example, the ..read more

This article was originally published on SCOTUSblog on June 24, 2021, and is reproduced below in full with permission. On Monday, the justices ruled 5-4 that the “unreviewable authority” of administrative patent judges meant those APJs were appointed in violation of the Constitution’s appointments clause. The justices then ruled 7-2 that the remedy was one of the court’s own making — that the director of the U.S. Patent and Trademark Office now has the discretion to review those APJ decisions. Both rulings occurred in United States v. Arthrex, Inc. A decade ago, Congress enacted ..read more