PTAB/USPTO Update - April 2021

 USPTO News

• There is no USPTO news.

Notices, Guidance and Requests

• Administrative Updates to the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases, 86 Fed. Reg. 54 (March 23, 2021) [Written comments period closes May 24, 2021] USPTO seeks public input on proposed updates to the required technical and scientific qualifications for Patent Bar applicants. The goal of the proposed updates is to ensure fairness in the application process while also ensuring that patent practitioners who represent inventors are qualified, understand the technology, and are able to communicate effectively with inventors regarding the technical features of the invention.

Final Rules

• There are no new final rules.

Interim Rules

• There are no new interim rules.

Proposed Rules

• There are no new proposed rules.

PTAB Decisions

• New Precedential PTAB Decisions

• There are no new precedential PTAB decisions.

• New Informative PTAB Decisions

• There are no new informative PTAB decisions.

New Requests for POP Review

• Philip Morris Products v. RAI Strategic Holdings (IPR2020-01097) [Notification of Receipt of POP Request issued March 24, 2021] Petitioner requests rehearing of Institution Decision, presenting the questions of (1) whether the Fintiv analysis “should apply to IPR proceedings involving parallel ITC investigations,” (2) “whether a parallel ITC case precludes institution of an IPR,” and (3) “If a parallel ITC does not rule out institution, whether ITC respondents in the typical circumstances are required to drop all grounds that were raised, or reasonably could have been raised, in the IPR (‘IPR-eligible defenses’) from the ITC proceeding as a necessary, but not sufficient, condition to obtain institution, and whether they are required to do so unconditionally or if a Sotera-style stipulation will suffice.”
• Nintendo Co., Ltd. et al v. Gamevice, Inc. (IPR2020-01197) [Notification of Receipt of POP Request issued March 24, 2021] Petitioner requests rehearing of Institution Decision, presenting the question of whether the Board should “(1) deny institution in view of a parallel ITC investigation and (2) apply the Fintiv factors even though they do not account for the unique aspects of an ITC investigation.”
• SK Innovation Co., Ltd. et al v. LG Chem, Ltd. et al (IPR2020-01239 and IPR2020-01240) [Notification of Receipt of POP Request issued March 24, 2021] Petitioner requests rehearing of Institution Decisions, presenting the question of whether the Fintiv analysis “should be applied with equal force to parallel ITC proceedings without accounting for the significantly different legal impact of an Article III court and the ITC, an agency that lacks the statutory authority of a district court to invalidate a patent and whose jurisdiction and expertise in patent matters is clearly not entitled to the same deference by the Board.”
• Regeneron Pharmaceuticals, Inc. v. Novartis Pharmaceuticals Corporation et al (IPR2020-01317) [Notification of Receipt of POP Request issued March 24, 2021] Petitioner requests rehearing of Institution Decisions, presenting the question of whether the Fintiv analysis “should ipso facto be followed to discretionarily deny institution of IPRs under 35 U.S.C. § 314(a) when there are parallel proceedings before the United States International Trade Commission (‘ITC’).”
• 10X Genomics, Inc. v. United Kingdom Research and Innovation et al (IPR2020-01180 and IPR2020-01181) [Notification of Receipt of POP Request issued March 24, 2021] Petitioner requests rehearing of Institution Decisions, presenting the question of (1) whether the Fintiv analysis “should be clarified, modified, or abandoned,” (2) whether “stipulations requiring petitioners to agree not to raise any ground that was or could reasonably have been raised under §§ 102 or 103 on the basis of prior art patents or printed publications in district court [should] be generally available to overcome any issues related to the timing of future district court proceedings,” whether “they [should] be requested by the Board,” and when “they [can] be submitted,” and (3) whether “district courts’ schedules, including particularly dates other than dates set for the actual start of trial, [should] be excluded from the Fintiv analysis when issuing a discretionary denial of an inter partes review petition.”
• Mitek Systems, Inc. v. United Services Automobile Association (IPR2020-01101) [Notification of Receipt of POP Request issued March 24, 2021] Petitioner requests rehearing of Institution Decisions, arguing that “the Board’s determination misapprehended the applicable standard under General Plastic and Valve, and overlooked key record evidence establishing that Mitek’s Petition is not an unfair follow-on petition.”