Posts Tagged: "Precedential Opinion Panel"

USPTO Retires POP and Extends Director Review to Institution Decisions

The United States Patent and Trademark Office (USPTO) today announced that it is retiring the Precedential Opinion Panel (POP) and extending the Director Review process to decisions on institution in America Invents Act (AIA) proceedings. The POP was established in 2018 under Director Andrei Iancu. Earlier this year, Vidal said that guidance on replacing the POP was one of the issues she expected to announce in the first part of her second year in office.

CAFC Upholds PTAB Precedential Opinion Panel Decision Despite ‘Problematic’ Reasoning

On March 24, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a Patent Trial and Appeal Board (PTAB) Precedential Opinion Panel’s (POP’s) decision allowing patent owner DynaEnergetics Europe GmH to amend its claims, and also affirmed the PTAB’s decision that the original claims of the patent were unpatentable. Hunting Titan, Inc. petitioned for inter partes review of claims 1–15 of the U.S. Patent No. 9,581,422, asserting grounds of unpatentability based on anticipation and obviousness, including allegations that the claims were anticipated by U.S. Patent No. 9,689,223 (Schacherer). The Board instituted trial on all grounds and found all of the original claims unpatentable.

Patent Owner Tells PTAB Precedential Opinion Panel Fintiv Factor 2 Should Be Modified Post-Arthrex

On October 8, a motion was filed on behalf of K.Mizra LLC asking the Patent Trial and Appeal Board’s (PTAB’s) Precedential Opinion Panel (POP) to review a PTAB institution decision on the ground that Apple Inc. v. Fintiv (IPR2020-00019) Factor 2 should be modified. Instead of comparing the proximity of the district court’s trial date to the projected time to a PTAB final written decision (FWD), the timing should account for completion of Director Review based on the Supreme Court’s ruling in Arthrex v. Smith & Nephew, said the motion. The issue has not been previously raised before the POP to IPWatchdog’s knowledge.

PTAB Designates Three Precedential Decisions on Follow-On Petitions and Real Parties in Interest

On December 4, the United States Patent and Trademark Office (USPTO) designated three Patent Trial and Appeals Board (PTAB) decisions as precedential.  In Apple Inc. v. Uniloc 2017 LLC, the PTAB refused to institute inter partes review (IPR) based on Apple’s “follow-on copycat petition.” SharkNinja Operating LLC v. iRobot Corporation and Applications in Internet Time, LLC v. RPX Corp. both related to real parties in interest (RPI). In SharkNinja, the PTAB declined to engage in a lengthy analysis to consider whether a non-party must be named as an RPI and in Applications in Internet Time the PTAB found the non-party to be an RPI and denied institution.

PTAB Precedential Decision Nomination Form Could Lead to More Controversial Decision-Making Outside of Informal Rulemaking

In late September, Bloomberg News reported that Scott Boalick, Chief Administrative Patent Judge (APJ) at the Patent Trial and Appeal Board (PTAB), announced the introduction of a new form allowing members of the public the ability to nominate certain PTAB decisions for precedential status. The form, available on the U.S. Patent and Trademark Office’s website, asks those endorsing decisions to choose whether precedential or informative status should be conferred and to provide some brief reasons for the nomination. As Bloomberg’s coverage suggests, the anonymous nature of the process could encourage nominations from practitioners representing both patent owners and petitioners at the PTAB who may be concerned about how some clients may view their nominations. Such client overlap is a common feature at the PTAB, where many of the most active law firms representing patent owners are also atop the list of most active petitioners’ counsel.