PTAB/USPTO Update - November 2022

PTAB/USPTO Update - November 2022

Client Alert



Notices, Guidance, and Requests

  • Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights, 87 Fed. Reg. 191 (October 4, 2022) (requesting public comments on “a variety of topics, including prior art searching, support for claimed subject matter, request for continued examination (RCE) practice, and restriction practice, [] certain initiatives related to these topics that are outlined in the USPTO’s July 6, 2022, letter to the Food and Drug Administration (FDA)[, and] questions set forth in a June 8, 2022, letter to the USPTO from six United States Senators.”)
  • Expanding Admission Criteria for Registration To Practice in Patent Cases Before the United States Patent and Trademark Office, 87 Fed. Reg. 200 (October 18, 2022) (requesting public comments on (1) “whether it should revise the scientific and technical criteria for admission to practice in patent matters,” (2) “whether the accreditation requirement for computer science degrees should be modified to accept under Category A Bachelor of Science degrees in computer science awarded by an accredited United States college or university, regardless of the ABET accreditation status of the program,” and (3) “whether there should be separate requirements for practitioners who intend to only prosecute design patent applications”).

  • Expanding Opportunities To Appear Before the Patent Trial and Appeal Board, 87 Fed. Reg. 200 (October 18, 2022) (requesting public comments on “whether and how the PTAB’s rules and procedures should be modified to expand eligibility to appear as the lead or back-up counsel in AIA proceedings … in order to expand opportunities for practitioners who seek to appear before the PTAB”).

Final Rules

Interim Rules

  • There are no new interim rules. 

Proposed Rules

  • There are no new proposed rules. 

 PTAB Decisions

  • Precedential and Informative PTAB decisions can be found here.

New Requests for POP Review

  • Nokia of Am. Corp. v. TQ Delta, LLC (IPR2022-00664, -00665, -00666) [Requesting POP review of Institution Decision, presenting the questions of:
    • (1) “In deciding whether to institute inter partes review on a petition, should the Board consider a jury verdict and prior district court orders rejecting an invalidity challenge based on the prior art references raised in the petition?” and
    • (2) “What deference, if any, should the Board afford to prior findings of no invalidity by a federal district court and a jury, including those findings that relate to the prior art references raised in a petition for inter partes review?”]
  • Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc. (PGR2022-00025) [Requesting POP review of Institution Decision, presenting the questions of:
    • (1) “Whether the Board failed to apply clear Federal Circuit precedent when concluding that Spruce’s claims covering an entire class of CRF1 receptor antagonists were not unpatentable over Grigoriadis’ earlier disclosure of the use of crinecerfont, a CRF1 receptor antagonist, to treat CAH?” and
    • (2) “Whether the Board failed to apply clear Federal Circuit precedent when concluding that claims 1-19 were not unpatentable for lack of written description?”]
  • Google LLC v. Touchstream Techs., Inc. (IPR2022-00793, -00794, -00795) [Requesting POP review of Institution Decision, presenting the questions of:
    • (1) “Whether post-petition stipulations by a petitioner not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition … may be considered in deciding whether the Board should exercise discretion under § 314(a), rather than exercising discretion based on information presented in the petition filed under section 311 and any response filed under section 313” and
    • (2) “Whether the totality of the circumstances, including the timing of a Sotera stipulation and the reasons for any delay in filing it and the impact of such a stipulation, if any, on co-pending proceedings, should be considered in determining whether the Board should exercise its discretion to deny institution of inter partes review.” (citations omitted)]
  • Qualcomm Inc. v. FedEx Corporate Servs., Inc. (IPR2022-00584, -00585, -00586) [Requesting POP review of Institution Decision, presenting the questions of:
    • (1) “Whether the Board can rely on SharkNinja to institute trial without first completing an RPI analysis in accordance with AIT and AIT Remand, where 35 U.S.C § 312(a)(2) mandates that ‘[a] petition . . . may be considered only if . . . the petition identifies all real parties in interest,’ and where the patent owner timely challenged the candor of petitioner’s RPI listing with unrebutted evidence that the petitioner and the unnamed RPI engaged in gamesmanship, bad faith, and attempts to avoid estoppel; petitioner submitted mere attorney representations in response to the RPI challenge (citing no countervailing evidence); and the unnamed RPI is the sole litigation defendant and time-barred at institution from challenging the patents,”
    • (2) “Whether the Board can require a patent owner to establish the petitioner’s failure to identify an RPI is ‘objectively unreasonable’ and lacking good faith—thereby improperly shifting petitioner’s burden to establish compliance with 35 U.S.C § 312(a) (2) onto the patent owner—where the patent owner provided unrebutted evidence that petitioner and unnamed RPI had a non-public, preexisting, and established business (supplier and investment) relationship, the petitioner communicated extensively with the unnamed RPI regarding the IPR invalidity grounds before filing the petitions, the unnamed RPI is clearly the beneficiary of petitioner’s IPR filings, petitioner did not attempt to demonstrate that it had any interest in challenging the patents independent of its financial and business interests in the unnamed RPI, and petitioner provided mere attorney representations in response to the RPI challenge” (emphasis in original), and
    • (3) “Whether the Board can rely on SharkNinja to deny pre-institution requests for authorization to file a motion for additional discovery regarding RPI, given the Federal Circuit’s holding in VirnetX that ‘[b]ecause §42.51(b)(2)(i) authorizes a motion for additional discovery, the Board abused its discretion in denying [the patent owner] the ability to even file a motion’” (modifications in original).
  • Dell Technologies Inc. et al v. VideoLabs, Inc. (IPR2022-00628, -00629, -00701) [Requesting POP review of Institution Decision, presenting the questions of “the role of extrinsic evidence and knowledge of skill in the art in assessing entitlement to priority to earlier applications.”]


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