Posts Tagged: "Director review"

On September 6, New Vision Gaming and Development Inc. (New Vision) filed a brief with the U.S. Court of Appeals for the Federal Circuit (CAFC) on return from remand after the U.S. Patent and Trademark Office (USPTO) denied its request for Director Review. The case relates to a Patent Trial and Appeal Board (PTAB) decision canceling all claims of U.S. Patent No. 7,325,806 (‘806 patent) and was previously appealed to the CAFC. But since the last appeal, a report demonstrating evidence that PTAB judges are influenced by U.S. Patent and Trademark Office (USPTO) leadership gives new weight to New Vision’s arguments, says the brief.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal on September 7 granted sua sponte Director Review and affirmed a Patent Trial and Appeal Board (PTAB) decision denying rehearing of the Board’s decision not to institute a request for inter partes review (IPR) by NXP USA, Inc. The ruling clarified that Sotera-type stipulations submitted after an institution denial cannot serve as a basis for granting rehearing. In the underlying case, the PTAB denied institution of an IPR relating to IMPINJ, Inc.’s U.S. Patent No. 10,776,198 B1 under 35 U.S.C. § 314(a), in view of Apple Inc. v. Fintiv, Inc. Most relevant to Vidal’s Director Review decision, NXP in its rehearing request “submitted a stipulation agreeing that, should trial be instituted in this case, Petitioner will not pursue any grounds based on the [prior art] references relied on in this IPR matter.”

Yesterday, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued a precedential sua sponte Director Review Decision in Code200, UAB v. Bright Data, Ltd., IPR2022-00861 and IPR2022-00862 Paper 18 (Aug. 23, 2022), clarifying the application of Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) in denying decisions to institute inter partes review (IPR) proceedings. The Patent Trial and Appeal Board (PTAB) denied institution of the two IPRs on July 25, 2022, explaining that the General Plastic factors weighed in favor of denial. Specifically, addressing Factor 1, which asks “whether the same petitioner previously filed a petition directed to the same claims of the same patent,” the PTAB said that the fact the Board had not evaluated the similar patentability challenges brought by the petitioner on the merits did not outweigh the petitioner’s failure to offer a stipulation agreeing not to raise the grounds asserted in the present IPRs in related district court litigation as per Sand Revolution II IPR2019-01393.

Late last week, the parties to the U.S. Patent and Trademark Office (USPTO) Director Review of the Patent Trial and Appeal Board (PTAB) institution decisions in OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, filed their opening briefs. While OpenSky vehemently denied any abuse of the PTAB system, VLSI said the cases force the USPTO to answer the question “whether the Office should allow itself to be used to facilitate extortion.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential order denying a petition for writ of mandamus filed by Palo Alto Networks (PAN) that asked the court to compel the U.S. Patent and Trademark Office (USPTO) to grant Director Review of the Patent Trial and Appeal Board’s (PTAB’s) decisions not to institute inter partes review (IPR) and post grant review (PGR) of Centripetal Networks’ patents. PAN argued that the USPTO’s policy of refusing to accept requests for Director Review of institution decisions violates the Appointments Clause as set out in United States v. Arthrex, Inc.

The U.S. Patent and Trademark Office (USPTO) yesterday announced and today published an official Request for Comments on the interim process for Director Review of Patent Trial and Appeal Board (PTAB) decisions, the Precedential Opinion Panel (POP) process and the interim process for PTAB decision circulation and internal PTAB review. USPTO Director Kathi Vidal released updated interim guidance on Director Review and PTAB decision circulation/internal review soon after taking office in April and has been accepting preliminary feedback via a dedicated email address, but the comments received in response to this request will officially  inform upcoming notice-and-comment rulemaking to formalize these processes, as well as any modifications to the interim processes prior to formalization. Comments are due by September 19, 2022.

The United States Patent and Trademark Office (USPTO) on Tuesday announced that it has updated its interim guidance on the Director Review process under Arthrex v. Smith & Nephew to indicate that parties should identify any issues of first impression in their requests for Director Review. In a conversation with IPWatchdog Founder and CEO Gene Quinn yesterday, USPTO Director Kathi Vidal said that “it helps when parties focus the review on particular issues,” and indicated that issues of first impression fall under one of the three main categories of cases warranting Director Review.

United States Patent and Trademark Office (USPTO) Director Kathi Vidal has intervened in two Patent Trial and Appeal Board (PTAB) cases that have caused much controversy in the patent world. Vidal yesterday granted Director Review in both OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, both of which have been the subject of scrutiny by members of Congress and patent practitioners, since the petitioners involved were incorporated after Intel was found to have infringed VLSI’s patents in district court and have no discernable business operations beyond challenging VLSI’s patent claims. The two entities’ petitions were also nearly identical to inter partes review (IPR) petitions previously filed by Intel that had been rejected by the USPTO.

In late March, the U.S. Court of Appeals for the Federal Circuit heard oral arguments in Arthrex, Inc. v. Smith & Nephew, Inc. (Arthrex II) to determine whether the U.S. Patent and Trademark Office (USPTO) had effectively addressed the constitutional violation under the Appointments Clause that was identified in previous rulings from the Federal Circuit and the U.S. Supreme Court (Arthrex I). While the impact of the Federal Circuit’s ruling will likely be cabined by the recent Senate confirmation of Kathi Vidal to serve as USPTO Director, the decision could call into question the validity of at least the USPTO’s Patent Trial and Appeal Board (PTAB) operations during the tenure of Drew Hirshfeld as performing the duties and functions of the USPTO Director up to Vidal’s confirmation.

In the last few weeks of 2021, patent owner New Vision Gaming & Development filed a motion for reconsideration  of a remand order issued by the U.S. Court of Appeals for the Federal Circuit. That ruling, entered in early December, remanded New Vision Gaming’s appeal of covered business method (CBM) review proceedings back to the Patent Trial and Appeal Board (PTAB) “for the limited purpose” of requesting Director review of the CBM review decisions under the U.S. Supreme Court’s Arthrex standard. New Vision Gaming’s recent motion for reconsideration raises several issues regarding the U.S. Patent and Trademark Office’s (USPTO’s) implementation of Director reviews under Arthrex, making this particular case an important one to follow through at least early 2022.

Since the Supreme Court decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), there has been much discussion about the Court’s ruling mandating an option for users to request that the Director of the U.S. Patent and Trademark Office (USPTO) review Final Written Decisions of the Patent Trial and Appeal Board (PTAB) rendered in trials under the America Invents Act (AIA) on the validity of issued patents. But there has been little or no discussion on such Director’s review of PTAB decisions on institution of AIA trials.

Last week, patent owner Cellspin Soft filed a citation of supplemental authorities  with the U.S. Court of Appeals for the Federal Circuit (CAFC) asking the appellate court to either vacate or reverse an order from the U.S. Patent and Trademark Office (USPTO) denying Director review following a pair of inter partes review (IPR) proceedings conducted at the Patent Trial and Appeal Board (PTAB). Cellspin Soft is challenging the USPTO’s denial as invalid both under the Administrative Procedures Act (APA), as well as under the U.S. Supreme Court’s precedent in United States v. Arthrex (2021). Cellspin had filed requests seeking Director review of a pair of final written decisions invalidating all challenged claims of U.S. Patent No. 9258698, Automatic Media Upload for Publishing Data and Multimedia Content. It claims a machine-implemented method of media transfer utilizing a digital data capture device and a Bluetooth-enabled mobile device for publishing multimedia content automatically onto a website with minimal user intervention. Issued to Cellspin Soft in February 2016, the ‘698 patent has been asserted in infringement suits filed in U.S. district courts against several defendants including Panasonic, GoPro, Garmin, Nikon, Canon and Eastman Kodak.

During the Patent Public Advisory Committee (PPAC) quarterly meeting held today, participants provided an update on the Director Review process under the Supreme Court’s Arthrex v. Smith and Nephew ruling, among other announcements. Patent Trial and Appeal Board (PTAB) Senior Advisor and Judge Linda Horner noted that, since the ruling, 14 timely requests for Director Review have been received; 11 of those were for a batch of related inter partes reviews (IPRs). Hirshfeld this week issued two decisions on the first two requests, denying both; the rest remain pending.

In Part I, we looked at two of the legal principles that govern Arthrex Director review: Director review must be implemented by notice-and-comment “regulation,” not website, and the Administrative Procedure Act (APA) requires that the Director’s decision demonstrate “reasoned decisionmaking.” Today, we’ll look at a few more legal obligations that confine the U.S. Patent and Trademark Office’s (USPTO’s) discretion as the USPTO seeks a lawful implementation of Director review. This Part II concludes with a plea that the USPTO take the public interest seriously, as the public interest is reflected in various statutes outside the Patent Act.