The First Post-IPR Director Reviews are Denied

One of the topics to be discussed at tomorrow’s PPAC meeting is USPTO operations following the Supreme Court’s 2021 Arthrex decision.  In Arthrex, the Supreme Court created an additional layer of review by the PTO Director in Inter Partes Review (IPR) proceedings following a PTAB final written decision.  PTO Acting Director Drew Hirshfeld has considered the first two request for Director Review, and denied both requests. (IPR2020-00081 and IPR2020-00320).  It appears that the Director personally considered both cases rather than delegating the decision back to the PTAB or another Official.  Neither decision reach the merits but rather perfunctorily state:

It is ORDERED that the request for Director review is denied; and FURTHER ORDERED that the Patent Trial and Appeal Board’s Final Written Decision in this case is the final decision of the agency.

I expect that this approach will be the standard for almost all cases going forward.


19 thoughts on “The First Post-IPR Director Reviews are Denied

  1. 3

    Sorry, but this dismissive, quickly-get-these-off-my-plate, provide-no-reasoning approach is not going to cut it.

    SCOTUS did not grant the Patent Office the authority to institute their own version of the CAFC’s Rule 36.

    Did. Not.

    These folks — and all those who are following — should immediately go directly back to SCOTUS.

    Immediately. Directly.

  2. 2

    When I am confirmed as Director, I am going to be quite cross with Mr. Hirschfeld for usurping my prerogatives here. 😉

  3. 1

    More than a bit sad that on a legal blog, there is not a hint at all in the article that this action may be ultra vires, given the lack of the “acting in the capacity of” for a non-appointed person.

    If Boundy wanders by, I wonder what his take would be.

    1. 1.1

      There are a bunch of decisions stating that (1) acting head can temporarily fill the shoes of the head, even though not senate confirmed and (2) acting head can make the same decisions would a properly appointed head.

      1. 1.1.1

        yup – just as there are issues with TIMING of any such temporary appointments clause related items.

        My point here is that there is NOT EVEN A WHISPER of the massive problems with what is going on.

        As stated: more than a bit sad.

    2. 1.2

      I remain skeptical that an ultra vires argument would go anywhere. Finality, not justice or equity, is the watchword of the judiciary.

      1. 1.2.1

        None of “finality, justice, or equity” (as far as I can tell in what you may mean by those words) has anything to do with the Arthrex decision as written by the Supreme Court and the ability of Mr. Hirschfeld to legitimately wield any decisions on the post-IPR petitions.

        There need be a MOUNTAIN of work to be done prior to any legitimate decisions could be rendered.

        If you think the ‘issue’ that STARTED the Arthrex case seemed inconsequential – THIS blows THAT out of the water.


          I think the Arthrex decision an expression of the desire for Finality. Being able to take an educated guess on how the PTO Director would act, the Court looked at the options and selected the one that would tend towards Finality. Granted, the are ancillary issues that the decision created, like the one you pointed out, but the decision ultimately trends towards finality.


            You forget a major point in your, “Being able to take an educated guess on how the PTO Director would act,” in that the current person “acting” is NOT a duly appointed Director (and even IF the designation of a proper temporary Director were to be in place, that designation has legal time limits.

            But beyond the actual legal details, I highly doubt that the Supreme Court was even aware of the Admin Law technicalities, much less fashioned their decision in view of such technicalities.

            You presume FAR too much.


              Our points are not necessarily mutually exclusive:

              A) The Supreme Court prefers outcomes that they understand to increase finality; and
              B) The Supreme Court does not fully understand all of the implications of their decisions.


                point taken on the non-mutually exclusive nature.

                That being said, the Supreme Court has been historically adverse to finality in the patent sphere (as seen in their anti-bright line mentality, as well as the fact that they ign0re what Congress did in 1952 as a rebuke to the Court).

                They have an addiction of sticking their fingers into the wax nose of patent law.

    3. 1.3

      No need to wonder, see Mr. Boundy’s and others legal arguments re a two part recent IPWatchdog article on this very subject, arguing that PTO Acting Director Drew Hirshfeld has no authority to act, and that that a burdensome and time consuming full written independent final decision must be given by the [new] Director in response to every reconsideration request to the Director in an IPR decision [instead of what is actually being done here.] I wonder if all three will participate in some kind of legal challenge?

      This whole thing has been a big disappointment so far for all those hoping that Arthrex would throw a big monkey wrench or wreaking ball into the entire IPR system. [Reminds me that I was told by one old attorney years ago of an unwritten rule of law that “judges do not normally do stupid,” such as interpreting statutes to wreck entire Acts of Congress.]

      1. 1.3.1

        Put the pom-poms down there Paul.

        Your “This whole thing has been a big disappointment so far for all those hoping that Arthrex would throw a big monkey wrench or wreaking ball into the entire IPR system” is a little over the top.

    4. 1.4

      Yea, it takes a certain type of person (hint: Ivy League grads) to simultaneously believe that the old IPR panels were unconstituional because they weren’t supervised by a Senate-confirmed Officer… but we don’t need said Senate-confirmed Officer to actually exist in real life.

      1. 1.4.1

        Possible requested Director reconsideration of IPR APJ decisions was the simple non-destructive fix the Sup. Ct. adopted in Arthrex, not the much more draconian proposals from the parties or the Fed. Cir. below.


          P.S. See Prof. Crouch at 1.1 above re PTO Acting Director Hirschfeld acting here. [The case law he refers to prevents Senators from shutting down U.S. Government operations by delaying the hundreds of direct appointments all new Presidents have to make.]

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