IP Newsflash

The USPTO Director denied a patent owner’s request for discretionary denial of two inter partes review (IPR) petitions, citing the petitioner’s “well-settled expectation” that it would not be accused of infringing the two challenged patents. The Director’s conclusion was based on the petitioner’s decade-long business relationship with the original owner of the challenged patents.

The Federal Circuit recently addressed whether the PTO must conduct notice‑and‑comment rulemaking before issuing instructions that guide how the Board should exercise discretion at the institution stage of IPRs. The court held that no such rulemaking is required. Instructions to the Board regarding its use of the Director’s delegated discretionary authority not to institute review are merely general statements of policy exempt from notice-and-comment rulemaking.  

The Federal Circuit recently affirmed a Patent Trial and Appeal Board decision finding claims that had been subject to an ex parte reexamination unpatentable. As a threshold issue, the court held that IPR estoppel under 35 USC § 315(e)(1) does not apply to ongoing ex parte reexaminations. Accordingly, the Patent Office did not err in continuing the reexamination after issuing final written decisions in co-pending IPRs.

The Federal Circuit recently denied a petition for a writ of mandamus that challenged the PTO Director’s reliance on “settled expectations” to discretionarily deny two inter partes review (IPR) petitions. In so doing, the court explained that, while it was not deciding whether the Director’s use of “settled expectations” was correct, the petitioner’s arguments about what factors the Director may consider when deciding whether to institute an IPR or post-grant review (PGR) are not generally reviewable and did not provide sufficient basis for mandamus review here.

The Federal Circuit recently vacated a summary judgment ruling of invalidity, holding that the district court erred in applying preclusive effect to the Patent Trial and Appeal Board’s unpatentability findings regarding other claims in the same patent. In doing so, the Federal Circuit reiterated that issue preclusion does not apply where the prior factual determinations were made under a lower standard of proof.

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).