PTAB/USPTO Update - May 2021

USPTO News

Legislation

  • There is no new legislation.

Notices, Guidance and Requests

  • Fast-Track Pilot Program for Appeals Related to COVID-19, 86 Fed. Reg. 71 (April 15, 2021) (Initiating the Fast-Track Pilot Program for Appeals Related to COVID-19 to provide for the advancement of applications out of turn in ex parte appeals related to COVID-19 before the PTAB).
  • Public Search Facility User ID and Badging, 86 Fed. Reg. 72 (April 16, 2021) [Written comments period closes June 15, 2021] (seeking comments regarding extension and revision to an existing set of information collected from applicants seeking to use the USPTO’s Public Search Facility to search and retrieve information from publicly accessible patent and trademark collections).
  • Patent Prosecution Highway (PPH) Program, 86 Fed. Reg. 72 (April 16, 2021) [Written comments period closes June 15, 2021] (seeking input on information to be collected under Global and IP5 Patent Prosecution Highway Programs).
  • Generic Clearance for the Collection of Qualitative Feedback on Agency Service Delivery, 86 Fed. Reg. 76 (April 22, 2021) [Written comments period closes June 21, 2021] (seeking input on collection of qualitative feedback on current services offered by the USPTO).
  • Rules for Patent Maintenance Fees, 86 Fed. Reg. 82 (April 30, 2021) [Written comments period closes June 29, 2021] (seeking comments on the extension and revision of an existing set of information collected relating to payment of patent maintenance fees).
  • Third-Party Submissions and Protests, 86 Fed. Reg. 82 (April 30, 2021) [Written comments period closes June 29, 2021] (seeking comments on the extension and revision of an existing set of information collected relating to third party submissions under 37 CFR 1.290 and protests under 37 CFR 1.291).

Final Rules

  • There are no new final rules.

Interim Rules

  • There are no new interim rules.

Proposed Rules

  • There are no new proposed rules.

PTAB Decisions

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

New Requests for POP Review

  • Canon Inc. v. Optimum Imaging Techs. LLC, IPR2020-01321, -1322 [Notification of Receipt of POP requests issued April 1, 2021; Notification of Receipt of POP Request: Amicus Forms issued April 15, 2021] [Petitioner requests “review of … Decision[s] Denying Institution of Inter Partes Review” presenting the questions of (1) whether denying institution of a “Petition … based on newly discovered prior art (not uncovered in three earlier searches) … [that] was filed expeditiously after the discovery of the new prior art” “is contrary to the following precedent of the Board… [in] Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential)” and (2) whether “discovery of new prior art … should weigh against institution, particularly where the time to raise the new prior art in the parallel litigation has passed.”].
  • Cellco Partnership d/b/a Verizon Wireless v. Huawei Techs. Co., Ltd. IPR2020-01352 [Notification of Receipt of POP request issued April 9, 2021] [Petitioner requests review of Decision Denying Institution of Inter Partes Review presenting the question of (1) whether finding factor 3 in the Fintiv framework to favor denial of institution “where the Petitioner is diligent in filing the petition months before the statutory deadline, even when the parallel litigation has advanced to a claim construction hearing at the time of institution” is contrary to the Board’s precedent, (2) whether finding factor 5 in the Fintiv framework to favor denial of institution “where petitioner and defendant in the parallel district court proceeding are the same party” is contrary to the Board’s precedent, and (3) whether denying institution was contrary to 5 U.S.C. § 706(2)(D); 5 U.S.C. § 553(b), (c); and 35 U.S.C. §§ 2(b)(2)].
  • SolarEdge Techs. Ltd. v. SMA Solar Tech. AG, IPR2020-00021 [Notification of Receipt of POP request issued April 26, 2021] [Petitioner requests review of Final Written Decision holding that Petitioner had not shown the challenged claims unpatentable presenting several questions relating to the use of applicant admitted prior art (“AAPA”) and the earlier discretionary denial of a second Petition that did not rely on AAPA].  

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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