PTAB/USPTO Update - December 2022

PTAB/USPTO Update - December 2022

Client Alert


USPTO Leadership


Notices, Guidance, and Requests

  • Meetings: Joint USPTO-FDA Collaboration Initiatives, 87 Fed. Reg. 67019 (November 7, 2022) (Announcing a public listening session on January 19, 2023, titled ‘‘Listening Session on Joint USPTO–FDA Collaboration Initiatives.’’ The purpose of the listening session is to seek public comments on proposed initiatives for collaboration between the agencies to advance President Biden’s Executive Order on ‘‘Promoting Competition in the American Economy’’ and to promote greater access to medicines for American families.)
  • Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights, 87 Fed. Reg. 60130 [Comments period closes February 1, 2023 (after an extension)] (Seeking initial public comments on proposed initiatives directed at bolstering the robustness and reliability of patents to incentivize and protect new and nonobvious inventions while facilitating the broader dissemination of public knowledge to promote innovation and competition)
  • Study on Non-Fungible Tokens and Related Intellectual Property Law Issues, 87 Fed. Reg. 71584 (November 23, 2022) [Comments period closes January 9, 2023, and public roundtables will be held on January 10, 12, and 18; requests to participate as a panelist are due by December 21, 2022] (Announcing a joint study of the USPTO and the US Copyright Office regarding issues of intellectual property (IP) law and policy associated with non-fungible tokens (NFTs)) 

Final Rules

  • Date of Receipt of Electronic Submissions of Patent Correspondence, 87 Fed. Reg. 68900 (November 17, 2022) (Amending the patent rules of practice to provide that the receipt date of correspondence officially submitted electronically by way of the USPTO patent electronic filing system (EFS) is the date when the USPTO received the correspondence rather than the date on which the correspondence is received at the correspondence address in Alexandria, Virginia)
  • Eliminating Continuing Legal Education Certification and Recognition for Patent Practitioners, 87 Fed. Reg. 68064 (November 14, 2022) (Amending the rules of practice in patent cases and the rules regarding the representation of others before the USPTO to eliminate provisions regarding voluntary continuing legal education (CLE) certification for patent practitioners) 

Interim Rules

  • There are no new interim rules.

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

  • Samsung Electronics Co., Ltd. v. Netlist, Inc. (IPR2022-00615) [Requesting POP review of Institution Decision, presenting the questions of (1) “Whether the Office should clarify the scope of the precedential General Plastic test under § 314(a) for evaluating serial patent challenges—consistent with Vivint—to include previously filed post-grant examination requests, particularly where those requests were inter partes reexamination requests that were filed by a party related to the IPR petitioner and resulted in a decision on the merits affirmed by the Federal Circuit” and (2) “Whether the Board should clarify that the burden of persuasion on questions of privity and real parties in interest under § 315(b) does not shift back to patent owners but rather remains with petitioners following an initial showing by Patent owner of evidence that tends to show that a particular third party should be named as a real-party-in-interest”]
  • Guardant Health, Inc. v. University of Washington (IPR2022-00816) [Requesting POP review of Institution Decision on the basis that “[t]he [Institution] Decision misapprehends the stated obviousness case and relevant law in arguing obviousness is not established based merely on ‘independently’ identifying teachings in different references or what ‘an ordinarily skilled artisan could have’ done,” arguing that “[s]uch legal principles and argument are inapposite where, as here, multiple prior art references expressly teach or suggest what is claimed (i.e., the ‘precise teachings’ of KSR)”]
  • RR Donnelley & Sons Company v. ScriptChek Visual Verification Systems, Inc. (IPR2021-00564) [Requesting POP review of Final Written Decision on the basis that (1) “the Board improperly held that in order for a petitioner to be considered a privy and for the Section 315(b) time-bar to apply, the petitioner (a) must have had actual notice of an earlier lawsuit during its pendency, and (b) must have known that the plaintiff in the earlier lawsuit ‘intended’ the petitioner’s products to be the subject of the earlier lawsuit” and (2) “the Board improperly placed the burden on Patent Owner to prove that Petitioner had actual notice of the earlier lawsuit during its pendency, and knew of the plaintiff’s ‘intent’ to make Petitioner’s products the subject of the prior lawsuit”]
  • Ebates Performance Marketing, Inc. d/b/a Rakuten Rewards v. International Business Machines Corporation (IPR2022-00646) [Requesting POP review of Institution Decision, presenting the question of “[w]hether the Board has the authority under 35 U.S.C. § 314(a) to institute an inter partes review by relying on a combination of references to meet a claim limitation when the Petition at best relied on that combination of references to meet a different claim limitation”]
  • Cisco Systems, Inc. v. Ramot at Tel Aviv University Ltd. (IPR2022-00575 and -00576) [Requesting POP review of Institution Decisions, presenting the question of “how the presumption of proper Examiner consideration that is protected by the ‘material error’ prong of the Advanced Bionics framework is to be applied -- to the many prior art combinations that were considered but not deemed worthy of discussion by the Examiner”]
  • Microsoft Corporation v. ThroughPuter, Inc. (IPR2022-00758) [Requesting POP review of Institution, presenting the questions of (1) “Does the Board have authority under 35 U.S.C. § 311(b) to determine whether a printed publication is prior art by reviewing the priority claim of a challenged patent pursuant to the requirements of 35 U.S.C. § 120, even if the Office of Petitions previously allowed entry of a similar priority claim containing the same alleged error?” and (2) “Are the requirements of § 120 met where a challenged patent’s priority claim references an original application filed with a truncated and thus defective priority claim instead of a later-filed reissue application where the truncated priority claim was extended?”]
  • Nearmap US, Inc. v. Pictometry International Corp. (IPR2022-00735) [Requesting POP review of Institution Decision, presenting the questions of (1) “Do 35 U.S.C. 314(a) and 37 C.F.R. § 42.108(c) limit the scope of evidence that the Board may consider when determining whether a petitioner has demonstrated a ‘reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged’ to ‘the information presented in the petition filed under section 311 and any [patent owner preliminary] response filed under section 313’?” and (2) “When Petitioner’s evidence by itself is insufficient to satisfy the ‘reasonable likelihood’ standard, may the Board sua sponte search for and introduce its own evidence and then rely on the Board-supplied evidence, ‘taken together’ with Petitioner’s evidence, to satisfy Petitioner’s burden of showing a ‘reasonable likelihood’ of prevailing?”]


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