Last week, Acting USPTOUnited States Patent and Trademark Office. See also PTO. Director Coke Morgan Stewart accelerated the agency’s recent backslide on policies governing the Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.) by issuing an “interim process” that blatantly violates legal requirements for agency rulemaking; creates a new, non-statutory barrier for members of the public seeking agency review; and establishes a system where agency leadership will now hand select which challenges may proceed based on discretionary factors, instead of letting each petition’s merits win the day.
And she’s already used it to benefit a litigation funding-backed non-practicing entity that’s accusing body cameras and in-car recorders for police of infringement, raising costs for taxpayers and rendering law enforcement less accountable and less secure.
Undermining the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.
Announced via a memo sent to PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges on March 26th, there is now a “bifurcated” process during which all America Invents Act proceeding petitions will be reviewed by the director, in consultation with three PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges, to assess whether they will be denied on discretionary grounds. If petitions are allowed to proceed they will then be referred to a separate panel of judges for merit-based consideration. Although the policy is “temporary” due to purported “current workload needs,” when it is put in the context of the agency also reinstating the controversial NHK-Fintiv rule and announcements that PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges should expect layoffs, it seems obvious that current USPTOUnited States Patent and Trademark Office. See also PTO. leadership—leadership that was never confirmed by the Senate and that lacks any technical training—is committed to gutting its own post-grant validity reviews.
As readers of Patent Progress are likely aware, under the America Invents Act (AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding.), patent validity challenges are reviewed by a panel of PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges, who simultaneously evaluate the merits of a petition and any discretionary reasons for instituting or denying an inter partes review (IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.) proceeding. When assessed on their merits, petitions proceed to an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. if there is a “reasonable likelihood” that at least one of the patent claims being challenged is invalid.
The discretionary considerations that PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges must weigh have ebbed and flowed under prior agency leadership. When the Fintiv rule became precedential in 2020, it established six discretionary factors for PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges to consider when determining whether a petition should be instituted. Then, in June 2022, Director Kathi Vidal issued a memorandum scaling Fintiv back, clarifying that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. would not discretionarily deny institution either 1) when parallel proceedings took place at the International Trade Commission (ITCInternational Trade Commission), 2) when the petition presented “compelling evidence of unpatentability,” or 3) when petitioners agreed to a so-called “Sotera stipulation.” While this was still imperfect, it at least improved the situation.
Now, Fintiv is back even stronger. In February, the USPTOUnited States Patent and Trademark Office. See also PTO. rescinded the Vidal memo and the limits on discretionary denials it established, including promoting discretionary denials when parallel proceedings occur at the ITCInternational Trade Commission. The new bifurcated process now goes a step further—putting more authority in the hands of the director personally to adjudicate denials. The inevitable result will be more denials that have nothing to do with the actual validity of a patent or the legitimacy of a challenge.
A Clear Violation of Procedural Law
What makes matters worse is that the new guidance clearly violates the Administrative Procedure Act (APA), which requires agencies to undergo a “notice-and-comment period” for rulemaking to ensure public input and prevent bureaucratic overreach. When Fintiv was challenged in court for bypassing this process, the agency argued “that notice-and-comment was not required because the NHK-Fintiv standard is a general statement of policy,” rather than a “substantive rule.” And, when Director Vidal floated the codification of Fintiv through the formal rulemaking process, it received overwhelming opposition from the public during the Advance Notice of Proposed Rulemaking (ANPRM). This may explain why the agency is now doing everything it can to avoid the rulemaking process that it is obligated by law to undertake.
This new process cannot credibly rely on the defense the agency used to justify Fintiv. Under the prior system––where patent judges were taking the Fintiv factors under consideration when deciding whether to deny a petition on discretionary grounds––the USPTOUnited States Patent and Trademark Office. See also PTO. repeatedly argued that Fintiv was simply guidance to the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges and well within the director’s discretion. Whatever one may think of the strength of that argument, the new memorandum clearly is not just guidance for the patent judges, and instead assigns the Fintiv analysis to a wholly different process. To add insult to injury, the Acting Director’s memorandum contradicts agency rules that were established through the proper rulemaking process—namely, rules implemented last June to limit director influence over panel decisions, specifically that “the Director will not be involved in directing or otherwise influencing the paneling or repaneling of any specific proceeding before the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. prior to issuance of the panel decision.”
A Gateway to Misconduct
Perhaps most troubling of all is the potential for abuse and ethical conflicts this new process introduces. Under Fintiv, we’ve already seen how director discretion can be dubiously asserted. Former Director Andrei Iancu created the rule and the agency applied it to protect patent trolls from validity challenges—including VLSI Technology, the client of Iancu’s longtime firm, Irell & Manella—where he returned after his time at the USPTOUnited States Patent and Trademark Office. See also PTO..
Fast forward to today, and the USPTOUnited States Patent and Trademark Office. See also PTO. Director nominee, John Squires, also has ties to VLSI among a number of other private equity IP interests. Regardless of a specific director’s professional background, under this new discretionary denial process, any director has the ability to deny challenges to patents affiliated with groups they may have a financial interest in, without any oversight or an accounting of a case’s merits. This is a dangerous avenue for corruption, or at the very least an appearance of impropriety that will undermine faith in the agency.
Businesses, inventors and consumers alike should be deeply concerned about what more will come of this attempt to address manufactured workload issues at the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. by way of an arbitrary, illegal, process which will deny the public access to valuable, congressionally-mandated patent validity review. Especially because it’s already being abused.
A Gateway Already In Use
While it remains to be seen how long the rule remains in force, Acting Director Stewart has already wasted no time applying the new measure to deny institutions for discretionary reasons, in effect overruling the panel of judges who deemed the petitions merits’ worthy of consideration.
In a director review decision issued by an unelected, unconfirmed appointee—and one without any technical training, unlike the judges she overruled—Stewart de-instituted an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. What’s more, it was an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. in which the Board judges in charge of reviewing the patent had determined it was likely at least partially invalid. That would be bad enough—Stewart is effectively overruling technically trained judges in favor of her own opinion.
But what’s worse is looking at the involved parties. The entity petitioning for review is Motorola Solutions. This branch of a storied American company makes systems for public safety—radios for emergency services and, in this particular case, body and in-car cameras for law enforcement.
On the other side is “Stellar LLC.” Stellar is a failed company that has never made anything but patents insofar as I have been able to determine. What’s more, their lawsuits are litigation-funded by an entity named “IP Litfin US 2024 LLC”. Who is IP Litfin? I don’t think anyone knows it but the funders. But whoever it is, they’re investing in litigation in critical areas of technology such as semiconductors and public safety systems, rendering Americans less safe and making American products more expensive.
We need a USPTOUnited States Patent and Trademark Office. See also PTO. that protects us from this type of abuse of patents—not one that embraces it.
