USPTO Acting Director Expands on Reasoning for New Interim PTAB ‘Workload Management’ Process

U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart has provided additional information on the Office’s Interim Processes for Patent Trial and Appeal Board (PTAB) Workload Management in an attempt to address unspecified questions the agency has been receiving about the new procedure.

Stewart sent a memorandum to all PTAB Administrative Patent Judges (APJs) last week detailing the new interim process for workload management. According to the memo, to ensure the PTAB can continue to meet its statutory obligations relating to ex parte appeals, the Director will exercise her discretion under 35 U.S.C. 314(a) and 324(a) to determine whether discretionary denial is appropriate for any petition for inter partes review (IPR) or post-grant review (PGR). See here for a more detailed discussion of how the process will work in practice.

That announcement came not long after Stewart in late February rescinded former USPTO Director Kathi Vidal’s 2022 memo, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” The Vidal memo had explained that the PTAB “will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”

But Stewart’s more recent memo said the Office has rescinded Vidal’s process and that parties to post-grant proceedings “should refer to [PTAB] precedent for guidance, including Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A).” It added: “To the extent any other PTAB or Director Review decisions rely on the Memorandum, the portions of those decisions relying on the Memorandum shall not be binding or persuasive on the PTAB.”

Now, in response to questions the Office has been receiving since last week’s announcement, Stewart issued a statement late Monday night expanding on her reasons for implementing the new processes. “We expect that the interim procedures will lead to significant efficiencies, expand capacity at the PTAB, and lead to higher quality decisions,” Stewart said, adding that the process will allow the Office, “where discretionary denial is appropriate, to avoid expending PTAB resources on other portions of the institution decision making process.”

Stewart went on to explain that it will also free up APJs to focus on active America Invents Act (AIA) proceedings and appeals and should provide more consistency with respect to discretionary denial decisions “and, thus, fewer requests for Director Review.”

While the interim process has been largely welcomed by patent owners, petitioners will likely be unhappy about the changes, since they are predicted to result in more discretionary denials. But Stewart’s statement said that the Director’s involvement “will provide transparency and feedback to the parties” and that the analysis will be “holistic” and consider the facts and circumstances of each case.

Stewart also pointed to the “liberal word limits” (14,000 for briefing and 5,600 words for reply briefs) identified in the memo, which she said will “permit the parties ample space to make their arguments and assist the Director and merits panel in making their institution decisions.”

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