The list of companies challenging the U.S. Patent and Trademark Office’s (USPTOUnited States Patent and Trademark Office. See also PTO.) new discretionary denial regime just keeps getting longer. On August 18th, Samsung and Google filed a joint writ of mandamus at the U.S. Court of Appeals for the Federal CircuitSee CAFC, becoming the latest in a growing series of legal challengers pushing back against the acting USPTOUnited States Patent and Trademark Office. See also PTO. leadership’s overhaul of the inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for 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.) process. CCIA joined an amicus brief in support of mandamus in this case.
Their filing follows similar actions from SAP America and Motorola Solutions, all arguing that the way in which acting leadership has shifted the Patent Trial and Appeal Board’s (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.) role from merit-based review to opaque discretionary denials violates both the Administrative Procedure Act (APA) and the Due Process Clause of the Constitution.
At the center of these cases is the USPTO’s abrupt and illegitimate decision earlier this year to revive and expand the use of Fintiv-based denials—which, as we’ve covered for years, allows the agency to reject 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. petitions for reasons like the status of parallel litigation, regardless of the strength of the patent challenge itself. This reversal came in February, when acting agency leadership rescinded guidance issued by former Director Kathi Vidal regarding the circumstances under which Fintiv could be invoked to deny a challenge.
As we covered at the time, the decision to reinstate Fintiv “ignored clear concerns expressed by the intellectual property community” and “was a complete rejection of the principles of the bipartisan America Invents Act.”
In their petitions, Samsung and Google argued that the USPTOUnited States Patent and Trademark Office. See also PTO. has been applying this policy change retroactively by shutting down pending IPRs that were filed before the reinstatement. Their case is straight-forward: two of their five 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. challenges have now been denied on discretionary grounds, even though 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. had already instituted three others on nearly identical facts.
As they note in their petition,
The acting director is increasingly denying petitions in batches while making up previously unannounced standards along the way — even applying new ones no one asked for.” […] That storm of unpredictability threatens the viability of the 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. system that Congress created: not only is the USPTOUnited States Patent and Trademark Office. See also PTO. now denying an abundance of petitions regardless of their merits, but petitioners have no idea whether the agency will follow its own rules from one day (or administration) to the next.
Google and Samsung are not alone in their concern, coming on the heels of similar petitions filed by SAP and Motorola in June. SAP saw most of its 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. challenges rejected after the guidance reversal, while Motorola’s instituted reviews were vacated entirely by the acting director. In each case, the companies relied on prior agency guidance that was reversed after the fact.
In response, the USPTOUnited States Patent and Trademark Office. See also PTO. has insisted that it’s not bound by a previous administration’s policies and that parties still have “alternatives,” in other words, costly and time-consuming district court litigation.
This misses the point. Congress created the 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. system to provide a faster, more affordable way to challenge bad patents. When acting leadership enforces a discretionary denial regime that functions like a black box—unilaterally issuing more than 200 denials this year—the system becomes unpredictable, inconsistent, and increasingly unusable. The irony is that the agency is using ‘efficiency’ as justification for its changes.
What’s more, as CCIA’s brief in in re Motorola notes, the USPTOUnited States Patent and Trademark Office. See also PTO. is statutorily obligated to provide a decision on the merits of institution even in the event of discretionary denial. 35 U.S.C. § 314(c) requires the Director to provide their determination under subsection (a) to the patent owner, petitioner, and the public. And the sole determination the Director makes under § 314(a) is whether the information presented “shows that there is a reasonable likelihood that the petitioner would prevail.” By failing to provide this determination, Director Stewart violates the law each and every time she engages in discretionary denial.
While the Federal CircuitSee CAFC has historically been reluctant to review 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. institution decisions, the serious constitutional, statutory, and procedural questions raised by these petitions may finally force the court to reconsider.
The stakes here go beyond whether these companies are entitled to 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. proceedings. The real question is whether any company can rely on a fair and consistent process at the USPTOUnited States Patent and Trademark Office. See also PTO., or whether the agency will continue operating under hastily implemented, ever-shifting policies that favor non-practicing entities at the expense of legitimating operating companies. If the Director can unilaterally decide which companies can access the law and which cannot, the system might as well not exist—no one can trust a system like that.
And right now, the reliability of this system is very much in doubt.
