PTAB/USPTO Update – July 2022 | WilmerHale – JDSupra – JD Supra

USPTO Leadership

USPTO News

• PTAB
• Patents
  • On June 22, 2022, the USPTO released the PTAB Parallel Litigation Study, which provides data and discusses trends in institution denials based on the Board’s precedential decision in Fintiv.  An executive summary is available here.
  • On June 8, 2022, the Department of Justice, the USPTO, and the National Institute of Standards and Technology (NIST) withdrew the 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments.
  • The USPTO provided a “Report to Congress” on Patent eligible subject matter in response to a March 5, 2021 letter from Senators Tillis, Coons, Hirono, and Cotton and after requesting and receiving public comments.
  • On August 1, 2022, the USPTO’s Patent Center online system will replace the legacy Public Patent Application Information Retrieval (Public PAIR) system for accessing and managing patent applications.
  • The USPTO launched a Sequence Listing Resource Center to provide “information about preparing and filing a sequence listing, updates regarding WIPO Standard 26 (ST.26), and other useful resources for patent applications that include biosequences.”  
  • The USPTO launched a new Quality Metrics webpage. 
  • The USPTO issued a new fee schedule, which includes a decreases to two fees (1704, 1714) related to PCT fees in foreign offices.
  • The European Patent Office awarded prizes to two U.S. inventors: MIT professor Donald Sadoway received the 2022 European Inventor Award and student scientist Erin Smith was awarded first place in the inaugural Young Inventors prize.
  • The USPTO updated the patent petitions timeline webpage to provide additional materials regarding the pendency of petition types.
• Trademarks
  • The Trademark Trial and Appeal Board (TTAB) updated the TTAB Manual of Procedure (TBMP) to include recent precedents from the TTAB and the Federal Circuit.
  • Starting on August 6, 2022, the USPTO will require all USPTO.gov account holders to verify their identities in order to submit electronic trademark forms.
  • The USPTO published a new trademark petitions webpage and announced that it will route inquiries to the Petitions Office to the Trademark Assistance Center.
• USPTO
  • The Department of Commerce celebrated the LGBTQ+ community by paying tribute to LGBTQ+ entrepreneurs and innovators.
  • USPTO Acting Deputy Under Secretary of Commerce for Intellectual Property and Acting Deputy Director Drew Hirshfeld stepped down from the Office on June 21, which was announced earlier in April. Mr. Hirshfeld had a nearly 30-year career at the USPTO, which included roles as Commissioner for Patents (2015) and performing the functions and duties of the Director.  
  • The National Inventors Hall of Fame Museum has reopened to the public. 

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

• On June 22, 2022, Director Kathi Vidal released memorandum guidance on the Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation. The guidance addresses conditions under which the Board’s precedential decision Apple Inc. v. Fintiv, Case IPR2020-00019, Paper 11 (March 20, 2020) (designated precedential May 5, 2020) does not apply and evidence that can be considered when evaluating the second factor articulated in Fintiv. 
• On June 9, 2022, Director Kathi Vidal released a memorandum on “Updated Guidance on the Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Review under § 311.” The guidance explains the conditions in which so-called ‘applicant admitted prior art’ from the challenged patent can be used in a ground of invalidity consistent with the Federal Circuit’s recent decision in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022).
• On June 21, 2022, the USPTO updated Section 10 of the guidance on the interim Director review process to specify that “if the requesting party believes that the issue presented for Director review is an issue of first impression, the party should indicate [so] in the email requesting Director review….”
• Relief Available to Patent and Trademark Applicants, Patentees, Reexamination Parties, and Registered Trademark Owners Affected by the Russian Invasion in Ukraine, TBD (June 30, 2022).
• Fourth Extension of the Modified COVID–19 Prioritized Examination Pilot Program for Patent Applications, 87 Fed. Reg. 124 (June 29, 2022).
• Extension of the Cancer Immunotherapy Pilot Program and Request for Comments, 87 Fed. Reg. 124 (June 29, 2022).
• Continuation of the Patent Prosecution Highway (PPH) Pilot Program Between the United States Patent and Trademark Office and the Mexican Institute of Industrial Property, 1449 OG 496 (June 28, 2022).
• Events for the Artificial Intelligence and Emerging Technologies Partnership, 87 Fed. Reg. 109 (June 7, 2022).
• Climate Change Mitigation Pilot Program, 87 Fed. Reg. 107 (June 3, 2022).

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?”]

Source: jdsupra.com