PTAB/USPTO Update - February 2022

USPTO Leadership

• Drew Hirshfeld is still performing the functions and duties of Director. President Biden nominated Kathi Vidal to be the next Director. On Jan. 13, the Senate Judiciary Committee voted 17-5 to forward her nomination to the full Senate. 

USPTO News

• On January 14, the USPTO and the Japan Patent Office (JPO) issued a joint statement regarding the Patent Prosecution Highway (PPH). Both Offices intend to improve their PPH programs by setting a target deadline of three months for issuing office actions for PPH applications.
• On January 27, the USPTO launched a Pro Bono Clearinghouse Program for the Trademark Trial and Appeal Board (TTAB).
• The USPTO released its annual Performance and Accountability Report (PAR) for Fiscal Year 2021. The report provides information about the USPTO’s programmatic and financial performance during Fiscal Year 2021.
• The USPTO launched the Deferred Subject Matter Eligibility Response (DSMER) pilot program, which is designed to evaluate how deferred applicant responses to subject matter eligibility (SME) rejections affect examination efficiency and patent quality. Participation in this program is by invitation only, and invitations will be mailed between February 1 and July 30, 2022.

Notices, Guidance, and Requests

• There are no new notices.

Final Rules

• There are no new final rules.

Interim Rules

• There are no interim rules.

Proposed Rules

• Electronic Patent Issuance, 86 Fed. Reg. 71209 (Dec. 15, 2021) [Written comments period closes February 14, 2022] (proposing to issue patents electronically through the USPTO’s patent document viewing systems (PAIR) rather than on paper).
• Date of Receipt of Electronic Submissions of Patent Correspondence, 86 Fed. Reg. 69195 (Dec. 7, 2021) [Written comments period closes February 7, 2022] (proposing to amend the patent rules of practice to provide that the receipt date of correspondence submitted via EFS is the date in U.S. Eastern Time when the USPTO received the correspondence). 

PTAB Decisions

• New Precedential PTAB Decisions

• • Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC, IPR2021-00330, (PTAB Jan. 14, 2022) (Paper 19) [The Precedential Opinion Panel (POP) held that Fedwire confirmation of payment constitutes sufficient evidence to demonstrate that the required fee accompanied an inter partes review petition under 35 U.S.C. § 312(a) and 37 C.F.R. § 42.103(a), and also constitutes sufficient evidence to demonstrate that “payment is received” under 37 C.F.R. § 42.103(b)].

• New Informative PTAB Decisions

• • There are no new informative PTAB decisions.

New Requests for POP Review

• Intel Corporation v. ACQIS, LLC (IPR2021-01103 et al.)  [Requesting POP review of Institution Decisions, presenting the questions of (1) Whether the Board’s priority analysis under 35 U.S.C. §120 is contrary to Federal Circuit precedent (e.g., Hollmer v. Harari, 681 F.3d, 1351 (Fed. Cir. 2012) (“Harari II”)), creating a panel split in how priority is analyzed within different panels of the Board; (2) whether the Board erred in applying Advanced Bionics because of Patent Owner statements when the Examiner had no obligation to consider them under Federal Circuit precedent and Office policy and no explicit evidence exists to indicate that the Examiner affirmatively or meaningfully did so; and (3) whether a Petitioner’s rights under the Administrative Procedure Act (APA) have been violated when the Board fails to provide Petitioner the adequate opportunity to respond to facts arising after a petition was filed, but the Board nevertheless relies on those after-arising facts in its Institution Decision, contrary to the precedent the Office itself established in its precedential Advanced Bionics framework]
• Unified Patents, LLC v. 2BCom, LLC (IPR2020-00996)  [Requesting POP review of Final Written Decision, presenting the questions of (1) whether the Board may decline to analyze the unpatentability of challenged claims where a reference found not to qualify as prior art is not used to teach any limitation of the claims and is used only as supporting evidence to show obviousness; and (2) whether the Board must consider evidence presented in support of public accessibility as a whole, or whether the Board may instead require a petitioner to establish a specific theory of availability tied to accessing a reference in a particular format through a particular means of access]
• Slayback Pharma LLC v. Sumitomo Dainippon Pharma Co., Ltd. (IPR2020-01053) [Requesting POP review of Final Written Decision, presenting the questions of (1) whether the Board erred in instituting the IPR on the basis of Grounds 1 and 2 when it applied an incorrect legal standard to find that certain claims were entitled to a filing date “no earlier than the filing date” of the latest-filed application, and then, relying on this legally erroneous filing date, found that an intervening printed publication anticipated these claims; and (2) whether the Board erred in finding claims 1-75 unpatentable over Saji in view of Horisawa when the petition never raised this specific ground]
• OpenSky Industries, LLC v. VLSI Technology LLC (IPR2021-01064) [Requesting POP review of Institution Decision, presenting the questions of (1) whether the Office should exercise its discretion to deny institution of petitions filed substantially for the purpose of harassing patent owners who prevail in Article III courts, such as re-filings of previously rejected petitions by newly formed entities seeking to extract compensation in exchange for withdrawing such abusive challenges; and (2) whether the Office should preclude petitioners from relying on inadmissible hearsay in the form of declarations prepared for separate proceedings for purposes of institution]
• Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc. (PGR2021-00088) [Requesting POP review of Institution Decision, presenting the questions of (1) whether the Board failed to apply clear Federal Circuit precedent when concluding that claims 1-4, 7-9, 11-14, 17-19, and 21-24 were not inherently anticipated; and (2) whether the Board failed to apply clear Federal Circuit precedent when concluding that claims 1-25 were not unpatentable for lack of written description]
• Merck Sharp & Dohme Corp. v. Genentech, Inc. (PGR2021-00039) [Requesting POP review of Institution Decision, presenting the question of whether the Board failed to apply clear Federal Circuit precedent requiring a patentee to provide adequate written description and enablement of a class of compounds, including multiple sub-classes, recited in a method of treatment claim, or whether, as the Board ruled, a patentee need not adequately describe or enable the full breadth of classes of compounds recited in such method claims or even disclose a single species for multiple sub-classes of compounds encompassed by the claims]
• Merck Sharp & Dohme Corp. v. Genentech, Inc. (PGR2021-00036) [Requesting POP review of Institution Decision, presenting the question of whether the Board failed to apply clear Federal Circuit precedent requiring adequate written description and enablement of a class of compounds recited in a method of treatment claim, or whether, as the Board ruled, a patentee need not adequately describe or enable the full breadth of classes of compounds recited in such method claims]