PTAB/USPTO Update - July 2022

USPTO Leadership

USPTO News

USPTO Engagement in Russia

  • On June 1, 2022, the USPTO notified the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) of the USPTO’s intent to terminate their agreement concerning Rospatent functioning as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international applications received by the USPTO as a Receiving Office under the Patent Cooperation Treaty (PCT). The termination will be effective December 1, 2022.

Legislation

  • Senators Leahy, Cornyn, and Tillis introduced the Patent Trial and Appeal Board Reform Act of 2022 on June 16, 2022. According to Sen. Leahy’s description, the Act addresses serial petitions, denial of proceedings due to parallel district court litigation, and Director rehearing of PTAB decisions, among other topics.
  • Senators Durbin, Tillis, and Grassley introduced the Interagency Patent Coordination and Improvement Act of 2022 on June 16, 2022. According to Sen. Durbin’s press release, the Act “would establish a task force between the United States Patent and Trademark Office (USPTO) and the Food and Drug Administration (FDA) to improve communication and coordination in implementing each agency’s activities related to patents.”

Notices, Guidance, and Requests

Final Rules

  • There are no new final rules.

Interim Rules

  • There are no interim rules.

Proposed Rules

  • There are no proposed rules

PTAB Decisions

  • New Precedential PTAB Decisions 
    • There are no new informative PTAB decisions.
  • New Informative PTAB Decisions 
    • There are no new informative PTAB decisions.

New Requests for POP Review 

  • Palo Alto Networks, Inc. v. Centripetal Networks, Inc. (IPR2022-00182) [Requesting POP review of Institution Decision, presenting the question of “[w]hether petitions filed substantially for the purpose of harassing patent owners who prevail in Article III courts, such as petitions targeting patents that have not been asserted against the petitioner but are the basis of district court judgments that are pending on appeal, should be discretionarily denied.”]
  • PNC Bank, NA v. United Services Auto. Ass’n (IPR2022-00050) [Requesting POP review of Institution Decision, presenting the question of “[w]hether the Board erred in denying institution of inter partes review when it applied an incorrect legal standard to find written description support for the claimed subject matter because ‘a person of ordinary skill in the art could readily recognize’ the genus from disclosure of only a single enumerated species, contrary to controlling Federal Circuit precedent confirming that ‘the four corners’ of the specification must demonstrate that ‘the inventor actually invented the invention claimed.’” (emphasis in original)]
  • Human Power of N Co. v. Heartbeet Ltd. (PGR2022-00004) [Requesting POP review of Institution Decision, presenting the question of whether the denial of institution was “contrary to … 35 U.S.C. § 112, ¶1 (pre-AIA)[;] … 37 C.F.R. § 42.61(c)[;] …  Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561 (Fed. Cir. 1997)[; or] …  Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc)” and whether the it is “necessary to correct errors of law in this case that, if allowed to be repeated, will prevent meritorious PGR challenges based on erroneous determinations that patents are entitled to pre-AIA priority and therefore not subject to PGR review.”]
  • Intel Corporation v. VLSI Technology LLC (IPR2022-00479) [Requesting POP review of institution decision presenting the following questions:
    • (1) “Whether, if a joined IPR is found to have been improperly instituted, the IPR should, as has been consistently found by numerous Board panel decisions, terminate as to joined parties, particularly otherwise time-barred joined parties?”
    • (2) “Whether a time-barred party whose initial IPR petition was denied under Fintiv may abandon its IPR defenses in court on the eve of trial, and then join an IPR raising those same defenses after it loses that trial particularly when its counterclaim of invalidity is rejected in a final judgment?” and
    • (3) “Whether the holding of Apple Inc. v. Uniloc 2017, LLC, IPR2020- 00854, Paper 9 (Oct. 28, 2020) (precedential), that discretionary denial factors favored denial of institution of a joinder request by an otherwise time-barred petitioner who already unsuccessfully sought to challenge the patent claims at issue, extend to joinder requests by petitioners whose previous challenge raised the same grounds and was denied as a matter of discretion rather on the merits?”]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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