PTAB/USPTO Update - January 2023

PTAB/USPTO Update - January 2023

Client Alert


USPTO Leadership


  • The USPTO launched the new the USPTO Virtual Assistant on the Trademarks webpage to “provid[e] immediate, targeted answers to common customer questions.”
  • On December 9, 2022, Secretary of Commerce Gina Raimondo and USPTO Director Vidal announced that Loletta (Lolita) Darden, Henry Hadad, and Olivia Tsai would become new members of the USPTO’s Patent Public Advisory Committee (PPAC) and that Deborah Gerhardt, Donna Griffiths, and Amy Hsiao would become new members of the USPTO’s Trademark Public Advisory Committee (TPAC).
  • On December 9, 2022, the leaders of the Group of Seven (G7) Intellectual Property offices and the World Intellectual Property Office (WIPO) met virtually and issued a joint statement pledging to “incentivize innovation” and “fight[] counterfeiting and piracy.”
  • USPTO Deputy Director Derrick Brent discussed defining moments in his career at a Boardside Chat on December 15, 2022.
  • USPTO Director Kathi Vidal announced the five winners of the Patents for Humanity: COVID-19 category competition in a Director’s Blog post on December 15, 2022.  The winners are:  National Institute of Allergy and Infectious Diseases, Regeneron Pharmaceuticals, University of South Florida, Caron Products, and Gilead Sciences Inc.
  • More information regarding the USPTO’s transition filings in DOCX format can be found on the USPTO’s website.  As noted below, the USPTO extended the option to submit an applicant-generated PDF of a new patent application in addition to a DOCX version through June 30, 2023 and has delayed imposition of a fee for new patent applications filed in non-DOCX format until April 3, 2023.


Notices, Guidance, and Requests

Final Rules

Interim Rules

  • There are no interim rules.

Proposed Rules

  • There are no proposed rules

PTAB Decisions

  • Precedential and Informative PTAB decisions can be found here

New Requests for POP Review 

  • Abbott Diabetes Care Inc. v. DexCom, Inc. (IPR2022-00913, -00914, -00921, -00922) [Requesting POP review of Institution Decision, presenting the question: “[m]ay a petition for inter partes review satisfy its obligations under the Board’s Rules, including Rule 42.104(b), by presenting only unpatentability grounds predicated on a claim construction that the petition expressly does not ‘conced[e]’ is correct, and that is irreconcilable with the petitioner’s arguments in a concurrent proceeding that the construction is legally incorrect?”]
  • SolarEdge Techs. Ltd. v. SMA Solar Technology AG (IPR2020-00021) [Requesting POP review of Final Written Decision, presenting the questions of: “1. Whether the panel’s rehearing decision erred by applying the Updated Guidance of June 9, 2022, entitled, ‘Updated Guidance on the Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under § 311’, which misinterpreted the Federal Circuit holding in Qualcomm v. Apple, 24 F.4th 367 (Fed. Cir. 2022), by stating that the Federal Circuit held that any use of a patent or printed publication in combination with AAPA satisfies the ‘basis’ requirement of 35 U.S.C. § 311(b) regardless of the manner and/or extent thereof. 2. Whether the panel erred in reversing its decision that the AAPA was not an admission when the Updated Guidance did not alter the substance of the analysis regarding admissions, and no new facts or evidence were provided to support such a reversal. 3. Whether the Updated Guidance, which set forth new and substantive limits on the public’s ability to partially rely on AAPA, impermissibly bypassed the formal notice and comment rulemaking procedures required under 35 U.S.C. § 316(a)(2) and (4) and the Administrative Procedure Act.”].
  • Ford Motor Co. v. Ethanol Boosting Sys., LLC (IPR2021-00341) [Requesting POP review of Rehearing Decision, presenting the questions:  “First, whether the Board has statutory authority to stay inter partes review proceedings pending resolution of pending parallel district and appellate court litigation. Second, whether the Board has statutory authority under 35 U.S.C. § 314(a) and authority under rule 37 C.F.R. § 42.71(d) to grant rehearing and initiate institution not based on a Petitioner’s showing ‘that there is a reasonable likelihood that the petitioner would prevail’ at the time of its Petition or at the time of its Rehearing request, but instead based on a nunc pro tunc incorporation of events that post-dated both. Third, whether the Board has statutory authority under 35 U.S.C. § 314(a) and authority under rule 37 C.F.R. § 42.71(d) to permit a Petitioner to incorporate into its rehearing request future events that had not occurred at the time of either the Petition or the Request for Rehearing. Fourth, whether the Board can properly grant rehearing of its decision not to institute an inter partes review based on ‘misapprehended’ events that had not yet occurred at the time of that decision.”].
  • Wolfspeed, Inc. v. The Trustees of Purdue Univ. (IPR2022-00761) [Requesting POP review of Institution Decision presenting the question: “Is it proper for the Board to deny institution of a petition under 35 U.S.C. § 325(d) on the grounds that it relies on “the same or substantially the same prior art” as an earlier petition, when the earlier petition was denied for some reason other than a deficiency in the prior art, such as the use of hindsight reasoning?”].



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