PTO Director Review Process following Arthrex

by Dennis Crouch

The USPTO has released some implementation information for Arthrex. In its decision, the Supreme Court held that the USPTO Director has power to review any IPR decision by the PTAB.  The Agency’s basic approach is as follows:

  1. At times, the PTO Director might initiate review of an IPR Decision sua sponte. This is unlikely.
  2. A party may request review of a final written decision for an IPR/PGR.

The request must be filed within 30-days of the PTAB’s final written decision or rehearing decision. The Agency has indicated that a request for review by the USpTO Director will be considered a request for rehearing under 37 C.F.R. 90.3(b) — that means that no appeal to the Federal Circuit will be due until after the Director acts on the request. In the short-term, the Office is not charging a fee for the request, but a fee will be added.

Request vs Petition: I’m not sure why, but the PTO is not identifying the Request for Review as a Petition for Review.

Pop-Panels and Ex Parte Proceedings: The Supreme Court identified inter partes review as demanding a process for PTO Director Review.  However, it is clear that this extends to Post-Grant and Covered-Business-Method Reviews.  It is unclear though whether it will extend to reexaminations or ordinary ex parte examination. I’m sure that the Director will still receive those petitions this month.  The Office created Precedential Opinion Panels (POP) as a mechanism for giving the PTO Director more direct control over PTAB precedent. The Agency has indicated that the POP system remains in place for now, but is could be eliminated in favor of the simpler system of director review.

Links:

Webinar: PTO will host a webinar Thursday, July 1 at 10 a.m. ET on implementation. [LINK]

40 thoughts on “PTO Director Review Process following Arthrex

  1. 6

    Paul @ 4.1.1.2:

    “how many D.C. judges are going to want to proceed to a time consuming trial after a final PTAB decision against the asserted claims just because a motion for reconsideration is pending?”

    Let’s ask this question instead:

    How many D.C. judges are going to want to put their trials on hold . . . knowing that a final IPR / PGR resolution / decision could take who-knows-how-long before being finally decided by the director?

    Courts should not be expected to delay trails . . . while the president, congress, and the Patent Office get their respective acts together.

    With a director not even yet nominated . . . plus potentially months of director-review delays due to the coming deluge of review requests . . . it could be 2+ years before new / recently-filed IPR / PGRs reach a final PTO resolution.

    Justice delayed really is justice denied.

    It is now unfair and unjust to all parties for D.C. courts to put trials on hold.

  2. 5

    So now the new director is going to be buried in IPR/ PGR reviews. Buried.

    Whew! Thank goodness s/he has absolutely nothing — nothing — else to do besides wading through 1000+ reviews a year.

    You know; like some sort of “super judge.”

    Why would the most qualified folks even consider taking this position just to be so buried?

    Does SCOTUS even realize what they have wrought?

    1. 5.1

      Nah. You forget that he has 6,000 people working for him. He can just delegate it and cherry pick a couple of important cases.

      1. 5.1.1

        Night — my reading of the decision is that only the director can rule on such reviews. That delegation — because such “delegatees” have not been approved by the Senate — would put us back in the unconstitutional column.

        Decisions by such delegatees would be just as constitutionally infirm as are the the decisions of the PTAB “judges.”

        A Senate-approved director (and no; Drew doesn’t qualify) must be the one who actually reviews — and explicitly signs off on — each case.

        No wise patent owner is going to settle for anything else.

        Nor should they.

        Otherwise, it’s back to SCOTUS we go . . .

        1. 5.1.1.1

          I have to agree with Pro Say’s pro se read here.

          Critically, the context here is on the explicit vetting by the Senate – that’s just something that the (actual) Director cannot delegate.

          1. 5.1.1.1.1

            So none of the other federal agencies, even Social Security, can have decision reconsideration requests from their many administrative trial decisions decided by anyone but the Director in person?

            1. 5.1.1.1.1.1

              Surely it depends on what other authority those agencies Directors have in the supervision of those agencies’ ALJs, no?

              The Court swept away the idea that the APJs lack civil service protections, and in place of that “fix,” the Court substituted the Director’s power unilaterally to reverse PTAB decisions. That ceases to be a “fix” to political accountability problem if the power simply devolves back to the PTAB.

              However, in other contexts, where other agencies have other mechanisms for supervision of their ALJs, this “fix” may not be apposite. The “fix” that the Court imposed here is not the only way to create political accountability—this is just the mechanism of political accountability that the Court created for this situation in this agency (i.e., the USPTO).

              1. 5.1.1.1.1.1.1

                Correct.

            2. 5.1.1.1.1.2

              Paul,

              Greg is correct in that it is a red herring to try to pull in any other agency as “fallout” from this patent agency case.

              This was patent law that was rewritten here.

        2. 5.1.1.2

          The CEO of of an agency does not get into factual disputes between parties but might look for cases to set policies. Not unlike PoP panels.

          Of course there will be delegation because the Director has bigger jobs. But he will sign off and be ultimately responsible. But not really. The Prez will be ultimately responsible. Because . . . Constitution.

          1. 5.1.1.2.1

            +1

        3. 5.1.1.3

          Just between you and me — the Director does not examine every application that he issues as a patent. Shhh!!!

          1. 5.1.1.3.1

            Alas, examining a patent application was not the subject expressly decided by the Supreme Court in the immediate instance.

    2. 5.2

      I wouldn’t be surprised if the director delegated an initial review of the cases to one or more people to make recommendations, and then just reviewed/adopted those recommendations.

      1. 5.2.1

        Sure, that is very plausible.

      2. 5.2.2

        “I wouldn’t be surprised if the director delegated an initial review of the cases to one or more people to make recommendations, and then just reviewed/adopted those recommendations.”

        Yet, such an “initial review” . . . is (effectively so; now that the director has the power to render his / her own, independent, de novo decision) . . . what the PTAB already did.

        Because such a “hands off,” “someone else tell me what they think” approach is contrary to what SCOTUS just ruled, it’s not going to work.

  3. 4

    Re the above terminology question, note FRCP 59’s word “motion” for reconsideration, etc., after decisions – neither “petition” or “request.”

    1. 4.1

      For all the fuss and feathers preceding the Arthrex decision of the Supreme Court, this very minor PTO addition of an option for the relative few [and rarely successful] PTAB final IPR decision reconsideration requests is presumably the only consequence.

      1. 4.1.1

        The Arthrex decision does give patent owners quite a bit of new leverage, assuming they can suspend proceedings, for potentially many months, by filing a request when a principal officer is not at the PTO.

        1. 4.1.1.1

          Yes I was wondering about that A. Lincoln.

          How can a person that is doing the duties of the director and who is not even called the acting director perform these duties of a principal officer?

        2. 4.1.1.2

          Abe, that’s two IPR final decision and appeal long-delay assumptions which are not likely to be politically or legally accepted, especially as contrary to the fast-pre-trial Congressional intent of IPRs. Nor, outside of Waco Texas, how many D.C. judges are going to want to proceed to a time consuming trial after a final PTAB decision against the asserted claims just because a motion for reconsideration is pending?

          1. 4.1.1.2.1

            I wasn’t contemplating what District Courts might do. At present it appears proceedings in the PTO might be put on hold for months if a party asks for principal officer review (before the need for a patent owner to appeal to Fed. Cir. to keep claims alive). At present I don’t see a way for Congress to fix that.

            Perhaps the Office muckety-mucks will review cases and send them along in the interim, anyway. Then in a few months or years the Fed. Cir. will tell the Office whether they can do that.

            1. 4.1.1.2.1.1

              But, I don’t mean to suggest that Office officials will decide whether to hold requests for a future Director. It’s the Acting Solicitor General’s call. It’s possible she has not yet decided, this soon after the SCOTUS decision. Or she could pass off that decision to an appointed SG.

              1. 4.1.1.2.1.1.1

                How does this end up being an SG’s call?

      2. 4.1.2

        “very minor” this is not Paul. Indeed, any losing patent owner or challenger who doesn’t request a director review is a fool. Given that they’ve already spent the big bucks putting their best foot forward at the PTAB, it shouldn’t cost materially more to take their case to the director.

        And just how does this new option fit in with the 1-year decision requirement? How long will it take for director decisions?

        Does the PTO even have the legal right to establish the rules, procedures, timing, etc for conducting such reviews?

        This is one can of worms only Congress can fix.

        1. 4.1.2.1

          [H]ow does this new option fit in with the 1-year decision requirement?

          How indeed? I wish that anyone other than you & I cared about that question, but that ship has sailed.

          Basically, the courts have construed §316(a)(11) to mean that the PTAB must deliver a decision within 1 year of institution. After that, the remands and reconsiderations can last until judgment day as far as the CAFC is concerned.

          This is clearly contrary to the purpose for which IPRs were created. No one whose opinion matters on this point, however, appears to care.

          1. 4.1.2.1.1

            This IPR / PGR “quicker, easier, cheaper” faux-justice creation is a mess, a fallacy, a lie, and worse. An abomination.

            It was a good idea that’s gone bad. Very, very bad.

            Congress needs to do what SCOTUS could have and should have done — tear this thing down and let our real courts and real judges do the job they’ve been doing for America for over 200 years.

          2. 4.1.2.1.2

            The “final determination” within one year required by Section 316(a)(11) is met by a FWD because that’s the final decision of the agency, ripe for appeal. Regardless of the new potential requested Director review. On the other hand, there is no other hand.

            1. 4.1.2.1.2.1

              because that’s the final decision of the agency, ripe for appeal.

              Except — obviously — it is not.

              It is the Director’s (following) decision that would be the final decision of the agency. The ENTIRE point of the Supreme Court’s re-writing of the law was to make it is so that the PTAB decision was NOT a final decision.

              I think that you have your hands mixed up.

        2. 4.1.2.2

          Your assuming the Director will not delegate the reconsideration motion back to the Board, or, have any greater odds of success for it than at the Board. Further, the real IPR expert who runs the Post Grant blog notes that there is a good reason not to request reconsideration and to directly appeal, as so many parties do. A reconsideration gives the Board and/or the other party a chance to patch up a legal defect in the Board decision that might otherwise be grounds for a winning Fed. Cir. reversal.

          1. 4.1.2.2.1

            Your assuming the Director will not delegate the reconsideration motion back to the Board

            That would not comply with the holding of the Supreme Court case.

            There is a Harry S Truman aspect here.

            link to trumanlibrary.gov

  4. 3

    Will an individual not appointed in accordance with the Constitutional requirements of placing a principal officer (but designated to perform “the functions and duties” of one) decide the requests? Or might the requests be pending several months for a Director’s review?

    1. 3.1

      Only one way to find out…

    2. 3.2

      My shifting historically pseudonym’d friend,

      Twice now in short order you have decided to engage a patent topic on the merits — and in both cases, you echo the view that I have already expressed.

      Kuddos on your maturing.

  5. 2

    A lingering question from prior threads (with slight spin):

    Does Hirschfield have the authority as indicated in the Supreme Court decision?

    Not only is he NOT an actual director (as that person may be so vetted to wield authority per the Supreme Court decision)…

    Not only is he NOT an ACTING director (with the potential limitations of the Vacancies Act)…

    He is merely “performing the duties of”

    Sure, What the Supreme Court re-wrote into law from the bench indicates new duties (and power) of the actual director, and there may be no ‘technical’ reason (other than not being actually vetted) to differentiate any one duty from any other duty, but______[fill in the blank]

    1. 2.1

      The answer to Anon’s questions is that Hirschfield is a duck.

      Quack. Quack.

  6. 1

    Totally off-topic, but today’s precedential order in In re Samsung (Dyk writing for a unanimous panel that also included Lourie & Reyna) is worth a read. The maxim “in ascertaining proper venue, we are not bound by a plaintiff’s efforts to manipulate venue” (slip op. at 9) is well taken, although I doubt that it will stop many plaintiffs from continuing to try.

    1. 1.1

      I suspect it’d be fun to be a fly on the wall when Albright reads this order.

      1. 1.1.1

        You didn’t notice the large fly swatter on his desk?

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