PTAB/USPTO Update - May 2023

USPTO News

• On April 20, the USPTO announced an Advance Notice of Proposed Rulemaking (ANPRM) seeking public input regarding potential PTAB reforms, including proposed changes to discretionary institution practices, petition word limits, and settlement practices for America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB)
• The USPTO announced that it will host the Green Energy Innovation Expo on May 17 at the USPTO headquarters
• On April 27, Director Kathi Vidal delivered a statement before the U.S. House of Representatives to discuss the operations, programs, and initiatives of the USPTO
• On April 24, the USPTO announced the recipients of the 2022 Patent Pro Bono Achievement Certificate. The recipients are listed on the USPTO’s Practitioner Recognition page and Firm Recognition Page.
• The USPTO announced a new Trademarks for Humanity awards competition to recognize brand owners who are using trademarks to help solve humanitarian challenges.  Applications will be accepted until July 14 or until 200 applications are  received, whichever occurs first.

Notices, Guidance, and Requests

• Meetings: Trademark Public Advisory Committee Public Hearing on the Proposed Trademark Fee Schedule, 88 Fed. Reg. 25623 (April 27, 2023) [Announcing hybrid public hearing to be held on June 5, 2023; written request to present oral testimony due by May 26, 2023; written comments on proposed trademark fees accepted until June 12, 2023]
• Meetings: Patent Public Advisory Committee Public Hearing on the Proposed Patent Fee Schedule, 88 Fed. Reg. 24392 (April 20, 2023) [Announcing hybrid public hearing to be held on May 18, 2023; written request to present oral testimony due by May 11, 2023; written comments on proposed patent fees accepted until May 25, 2023]
• Meetings: USPTO AI Inventorship: Notice of Public AI Inventorship Listening Session-West Coast, 88 Fed. Reg. 23408 (April 17, 2023) [Announcing public listening session to be held on May 8, 2023; registration to attend in-person or speak due by May 2, 2023; registration to attend virtually due by May 7, 2023 (East Coast listening session was held on April 25, 2023)]
• Patent Center Electronic Office Action Program, 88 Fed. Reg. 20138 (April 5, 2023) [Announcing start of the transition to USPTO’s Patent Center Electronic Office (e-Office) Action Program, which replaces the existing e-Office Action program available to users of Private Patent Application Information Retrieval (PAIR)]

Final Rules

•  There are no new final rules

Interim Rules

• There are no new interim rules.

Proposed Rules

• Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings before the Patent Trial and Appeal Board, 88 Fed. Reg. 24503 (April 21, 2023) (Comments due by June 20, 2023) [Advance Notice of Proposed Rulemaking (ANPRM) seeking public input regarding potential PTAB reforms, including proposed changes to discretionary institution practices, petition word limits, and settlement practices for America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB)]

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

• Life Spine, Inc. v. Globus Medical, Inc. (IPR2022-01434) [Patent Owner requesting POP review of Institution Decision, seeking clarification that “Becton, Dickinson factors (a) [(the similarities and material differences between the asserted art and the prior art involved during examination)] and (b) [(the cumulative nature of the asserted art and the prior art evaluated during examination)] relate only to subpart [A] [(whether the same or substantially the same art previously was presented to the Office)] and factor (d) [(the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art)] relates only to subpart [B] [(whether the same or substantially the same arguments previously were presented to the Office)].]
• Facebook Inc. v. Express Mobile, Inc. (IPR2021 -01455 and -01456) [Patent Owner requesting POP review of Final Written Decisions, presenting the questions of (1) “Whether a genuine dispute regarding the scope of a claim term in the context of an obviousness ground must be resolved before the final written decision of the Board can resolve the obviousness question,” and (2) “whether four or more references can be combined to create an obviousness rejection where those references contain multiple contrary teachings that are neither filed by the petitioner with the Board nor addressed by the final written decision.”]
• Roku, Inc. v. Intent IQ, LLC (IPR2022-01315) [Petitioner requesting POP review of Institution Decision, presenting the questions of (1) “Whether the Board may in institution decisions, consistent with its judicial role and requirements of due process—immune from appellate review—effectively assume for itself the role of expert witness, determining what a POSITA would have understood is taught by an asserted reference, in contrast to expert testimony, when the Board elevates its own understanding of the reference over the testimony of an expert in the field?” and (2) “What safeguards has the Board provided here under the Administrative Procedure Act (APA) to ensure that the agency’s evidentiary determinations are supported by substantial evidence, particularly in view of the Federal Circuit’s requirement in Kyocera Senco Industrial Tools Inc. v. International Trade Commission, 22 F. 4th 1369, 1377-79 (Fed. Cir. 2022) that an expert must at least have ordinary skill in the art? How is the Board’s reliance on mere framing of the applied reference by Patent Owner’s counsel—an unqualified expert—over the unopposed testimony of an expert in the field not an abuse of discretion akin to that in Kyocera?”)]
• Keysight Technologies, Inc. v. Centripetal Networks, LLC [Petitioner requesting POP review of Institution Decision, presenting the question of “[w]hether it is an abuse of the Board’s discretion under § 325(d) to deny institution when: (1) the Board in a prior IPR of a parent patent issued a final written decision finding the same art at issue in the present Petition rendered the claims of the parent patent unpatentable; (2) the prior final written decision and one of the five references at issue in the present Petition had been submitted in an IDS and initialed by the Examiner, but otherwise neither the prior final written decision nor any of the art at issue in the present Petition were discussed during prosecution; and (3) the Board elected not to conduct an error analysis under Step 2 of Advanced Bionics, declining to consider either the strength of the Petition’s grounds or the Petition’s evidence on the lack of material differences between the challenged claims and the claims of the parent patent that the Board found unpatentable in a prior IPR.”]