PTAB/USPTO Update - April 2024

by David Cavanaugh, Brian Lambson, PhD, Akkad Moussa, Alexander Nemtzow, Heather Petruzzi, Gilbert Smolenski | WilmerHale

USPTO News

On March 8, the USPTO joined other intellectual property offices in celebrating International Women’s Day with a theme of “Invest in Women: Accelerate Progress.”
On March 11, the USPTO announced the new Office of Public Engagement (OPE) “to advance the agency’s mission of increasing participation in the innovation ecosystem by strengthening outreach and support to American communities.”
On March 12, the USPTO and U.S. Copyright Office released a report to Congress titled Non-Fungible Tokens and Intellectual Property. The report, which responded to a June 9, 2022 letter from Senator Leahy and Senator Tillis, summarized comments from stakeholders, the current state of the law, and the two Offices’ analyses, and found that no new legislation is required to address NFTs at this time.
On March 18, the USPTO announced the creation of a Diversity Information Platform (DI Platform), which “provides the latest available data on demographic trends by industry and U.S. state, allows organizations to gauge how they compare, facilitates the sharing of information and best practices, and reports on USPTO’s geographic and workforce diversity.”
On March 20, the USPTO launched the Community Outreach Campaign: Intellectual Property (IP) Champions, which will “connect[] … USPTO employees (our designated "IP Champions")—trained in providing IP awareness and educational resources to diverse audiences—with high schools and local community centers.”

Notices, Guidance, and Requests

WIPO Diplomatic Conference on the Design Law Treaty, 89 FR 21242 (March 27, 2024) (requesting “public comments on negotiations at the World Intellectual Property Organization (WIPO) regarding a proposed Design Law Treaty (DLT)”).
Setting and Adjusting Trademark Fees During Fiscal Year 2025, 89 FR 20897 (March 26, 2024) (providing notice of proposed adjustments to various trademark fees).
Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations, 89 FR 19817 (March 20, 2024) (requesting comments on a March 18, 2024 memorandum issued to the patent examining corps titled “Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations (35 U.S.C. 112(f))”).
Request for Comments: Unlocking the Full Potential of Intellectual Property by Translating More Innovation to the Marketplace, 89 FR 18907 (March 15, 2024) (requesting comments “on how the agency can build on current initiatives to” “foster[] pathways for innovation to reach the marketplace, with particular attention to green, critical, and emerging technologies”).
Extension of the First-Time Filer Expedited Examination Pilot Program, 89 FR 17441 (March 11, 2024) (extending “First-Time Filer Expedited Examination Pilot Program … until either March 11, 2025, or until the date on which the USPTO grants a total of 1,000 petitions since the start of the pilot program, whichever occurs first.”).
USPTO AI/ET Partnership: Public Symposium on Artificial Intelligence and Intellectual Property, 89 FR 16734 (March 8, 2024) (providing notice of “a public symposium on IP and AI virtually and in person at Loyola Law School on March 27, 2024.”).

Final Rules

Electronic Submission of Notices of Appeal to the United States Court of Appeals for the Federal Circuit, Notices of Election, and Requests for Extension of Time for Seeking Judicial Review, 89 FR 22084 (March 29, 2024) (requiring any “notice of appeal to the United States Court of Appeals for the Federal Circuit, … notice of election to proceed by civil action in district court, and … request for extension of time for filing a notice of appeal or commencing a civil action” to “be filed with the Director of the USPTO by email”).
Signature Requirements Related to Acceptance of Electronic Signatures for Patent Correspondence, 89 FR 20321 (March 22, 2024) (“[U]pdat[ing] the signature rule” in patent cases “to provide for the broader permissibility of electronic signatures using third-party document-signing software, such as DocuSign® and Acrobat® Sign, and more closely align signature requirements with the rules of practice in trademark cases.”).

Interim Rules

There are no new interim rules.

Proposed Rules

Setting and Adjusting Trademark Fees During Fiscal Year 2025, 89 FR 20897 (March 26, 2024) (providing notice of proposed adjustments to various trademark fees).
Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 89 FR 15531 (March 4, 2024) (proposing to make permanent certain provisions of the Office's motion to amend pilot program (MTA pilot program) and to clarify the rules that apply the preponderance of the evidence standard and allocate burdens of persuasion in connection with motions to amend (MTAs).).

Proposed Legislation

There is no new proposed legislation.

PTAB Decisions

New Precedential PTAB Decisions
- There are no new informative PTAB decisions.
New Informative PTAB Decisions
- There are no new informative PTAB decisions.
Director Review Decisions
- SynAffix B.V. v. Hangzhou DAC Biotech Co., Ltd., IPR2022-01531
  - Decision subject to Director Review – Paper 17 (August 22, 2023) [Institution Decision denying institution]
  - Order delegating Director Review to a Delegated Rehearing Panel – Paper 19 (November 16, 2023) [ordering review by an independent Delegated Rehearing Panel to “review the Decision and determine whether the record demonstrates that the Decision misapprehended or overlooked any issue raised in the Director Review request” and “to determine whether to grant rehearing”]
  - (NEW) Delegated Rehearing Panel Decision granting rehearing, vacating decision denying institution, and remanding for further proceedings – Paper 23 (DRP March 4, 2024) [granting rehearing and vacating prior decision on the basis that the “version of the [prosecution history] disclaimer [applied in the decision was] erroneous, as it misapprehend[ed] or overlook[ed] … portions of the prosecution history.”]
- ASSA ABLOY AB v. CPC Patent Technologies Pty, Ltd., IPR2022-01006, IPR2022-01045 & IPR2022-01089
  - Decision subject to Director Review – Paper 47 (November 30, 2023) [Final Written Decision Determining No Challenged Claims Unpatentable]
  - (NEW) Decision vacating Final Written Decision and remanding for further proceedings – Paper 49 (March 15, 2024) [vacating Final Written Decision and remanding for further proceedings on the basis that “The Board’s Final Written Decisions employ[ed] a construction … that was not proposed by either party” and which requires supplemental briefing]
- Ford Motor Company v. Neo Wireless LLC, IPR2023-00763
  - Decision subject to Director Review – Paper 17 (November 9, 2023) [Institution Decision denying institution]
  - Order granting Director Review – Paper 19 (December 21, 2023) [ordering review by Director]
  - (NEW) Decision vacating decision on institution and remanding for further proceedings – Paper 28 (March 22, 2024) [vacating decision on institution and remanding for further proceedings on the basis that coordination with another Petitioner in a related multidistrict litigation (“MDL”) is not a “significant relationship” under General Plastic for purposes of whether the Board should exercise discretion to deny institution as a follow-on petition]
- American Honda Motor Co., Inc. v. Neo Wireless LLC, IPR2023-00797
  - Decision subject to Director Review – Paper 14 (November 9, 2023) [Institution Decision denying institution]
  - Order granting Director Review – Paper 18 (December 21, 2023) [ordering review by Director]
  - (NEW) Decision vacating decision on institution and remanding for further proceedings – Paper 27 (March 22, 2024) [vacating decision on institution and remanding for further proceedings on the basis that coordination with another Petitioner in a related multidistrict litigation (“MDL”) is not a “significant relationship” under General Plastic for purposes of whether the Board should exercise discretion to deny institution as a follow-on petition]
- General Motors LLC and Nissan North America, Inc. v. Neo Wireless LLC, IPR2023-00962
  - Decision subject to Director Review – Paper 11 (December 6, 2023) [Institution Decision denying institution]
  - Order granting Director Review – Paper 12 (December 21, 2023) [ordering review by Director]
  - (NEW) Decision vacating decision on institution and remanding for further proceedings – Paper 16 (March 22, 2024) [vacating decision on institution and remanding for further proceedings on the basis that coordination with another Petitioner in a related multidistrict litigation (“MDL”) is not a “significant relationship” under General Plastic for purposes of whether the Board should exercise discretion to deny institution as a follow-on petition]
- Nokia of America Corporation v. Alexander Soto and Walter Soto, IPR2023-00680, IPR2023-00681 & IPR2023-00682
  - Decision subject to Director Review – Paper 10 (November 3, 2023) [Institution Decision denying institution]
  - Order granting Director Review – Paper 12 (January 4, 2024) [ordering review by Director]
  - (NEW) Decision vacating decision on institution and remanding for further proceedings – Paper 18 (March 28, 2024) [vacating decision on institution and remanding for further proceedings on the basis that “the Board did not sufficiently explain its findings that substantially the same art and substantially the same arguments were previously presented to the Office.”]