December 7, 2022

Issue 39: PTAB Trial Tracker

USPTO Director Considers Changes to Director Review Process

Recently, USPTO Director Kathi Vidal stated that she is rethinking the Director Review process and is considering updating the current guidance on Director Review. The current interim process for Director Review was last updated September 22, 2022, after the USPTO issued a Request for Comments on the process.

A number of organizations responded expressing concerns about the issues that the Director may address in a Director Review. Specifically, parties have expressed concern that Director Review should not be used to make policy for the USPTO. For example, U.S. Manufacturers Association for Development and Enterprise (US MADE) stated that Director Review “must be limited to the kinds of decisions that a PTAB panel makes.” US MADE further added that “the new review process should be structured in a way that ensures that it is not used to evade [Administrative Procedure Act] rulemaking and impose new policies by fiat.” Another industry group — High Tech Inventors Alliance — agreed, stating Director Reviews “should be limited in their scope and should not be used as a substitute for notice and comment rulemaking.” Several other organizations, such as the Computer and Communications Industry Association and The American Intellectual Property Law Association, also expressed concerns.

Director Vidal has defended her Director Review decisions to date, stating that the decisions she has made as part of the Director Review process are in line with the rules and policies that were in place at the time. Director Vidal has confirmed her belief that upcoming changes to the Director Review process should ensure that the Director is not in a judicial decision-making role creating new policy. She further stated that the types of issues available for Director Review might be more limited moving forward, and that she wants to make the Director Review process sustainable so that the Director can balance their involvement in the review process with their other responsibilities.

Takeaway: Director Vidal seems to be continuing her work updating PTAB policies and procedures to make them more efficient and better serve their stated purposes. In light of the frequent updates at the PTO, parties should be sure to review all the latest guidance before engaging with this forum.

USPTO Looks to Overhaul Patent Practitioner Requirements

The USPTO is considering expanding the criteria for individuals seeking admission to practice in patent cases before the USPTO. In a Request for Comments, the USPTO sought public input on the scientific and technical requirements for admission to practice in patent matters before the USPTO. The request asked for comments on issues such as whether the agency should modify the accreditation requirement for computer science degrees and/or create a separate design patent practitioner bar. The USPTO issued a separate Request for Comments, also published on October 18, 2022, seeking input on its requirements for admission to practice before the PTAB, noting that it wanted to ensure quality representation without “creating undue restrictions or barriers to entry for practitioners.” The request came mere months after USPTO Director Kathi Vidal said that the agency’s Patent Public Advisory Committee should reevaluate whether it needs to “get more surgical” in its approach toward various industries.

These potential changes to remove some of the barriers to practicing before the USPTO may come as a welcome change to recent critics of the office’s practices. For example, scholars and attorneys alike have argued that the current requirements are especially disadvantageous to women and ethnic minorities. Recent data shows that the patent bar currently consists of about 70% male practitioners, with certain technology areas, like computer science and electrical engineering, having even fewer women practitioners.

Takeaway: In the months ahead, there may be changes at the USPTO that make practicing before the office more accessible to a wider a number of people. While this effort may not be explicitly aimed at increasing diversity, the results may lead to increased access for USPTO practice.

FINTIV Packs Less of a Punch in Light of Director Guidance

In Google LLC v. Jawbone Innovations, LLC, IPR2022-00623, the Board granted institution of Google’s IPRs challenging Jawbone Innovations’ patents. Jawbone argued for discretionary denial in light of Fintiv, relying on the July 2023 trial date for parallel litigation in the Western District of Texas. Id. at 7. Jawbone argued that denial of institution was warranted because the trial would conclude several months before the Board’s projected November 2023 statutory deadline for a final written decision. Id. The Board, however, determined that the district court’s trial date should not control the analysis. Id. at 8. Instead, the Board followed USPTO Director Kathi Vidal’s interim procedures for applying Fintiv and considered the district court’s median time-to-trial statistics and the current schedule of the case. Id. at 7–8; see also Interim Procedure for Discretionary Denials at 8–9. The Board concluded that the trial would likely occur “much later” than the July 2023 date currently set. Google LLC at 8. It likewise concluded that the third Fintiv factor, which considers the investment of the district court and the parties in the district court proceeding, did not weigh against granting institution because the district court proceeding was still in the early stages. Id. at 9. In addition, the Board also determined that the other Fintiv factors did not weigh against granting institution. Id. at 9.

Takeaway: The Director’s Guidance regarding application of Fintiv can result in a discretionary denial at the PTAB when there is parallel district court litigation. Practitioners should be prepared to address the likelihood of postponement of a district court trial date when addressing Fintiv factors in PTAB proceedings.

IDS Listing Insufficient for Denial Under § 325(d)

In Miltenyi Biomedicine GmbH v. Trustees of The University of Pennsylvania (IPR2022-00855), the Board confirmed that the mere listing of a reference in an Information Disclosure Statement (IDS) during prosecution is typically insufficient to support denial under § 325(d). The Board granted institution of inter partes review, rejecting Patent Owner’s argument that institution should be denied under 35 U.S.C. § 325(d) because a prior art reference on which Petitioner relied was cited in an IDS. The Board noted that the reference in question was “not substantively discussed during prosecution” and, therefore, there was no evidence that the examiner considered the same or substantially the same substantive arguments.

Takeaway: Petitions that rely on prior art listed on the face of a patent are not necessarily destined for denial of institution under § 325(d). Parties should analyze the prosecution history to understand what prior art references were substantively addressed by the examiner.