by Dennis Crouch
The Federal Circuit heard oral argument today in Apple Inc. v. Squires, 24-1864, a long-running challenge to the USPTO's Fintiv discretionary denial framework. Apple, Cisco, Google, and Intel argue that the NHK-Fintiv rule should have been adopted through notice-and-comment rulemaking under the Administrative Procedure Act (APA) rather than through precedential Board designations. The case presents a narrow but consequential question: when the Director instructs the PTAB how to exercise delegated institution authority, does that instruction constitute a "substantive rule" requiring APA procedures, or merely a "general statement of policy" that the agency may adopt without public input? The panel of Judges Lourie, Taranto, and Chen pressed both sides on whether a rule binding only on the Board triggers notice-and-comment requirements when the Director remains free to deviate from it entirely.
This is an important case, but some amount of practical obsolescence based upon the dramatic 2025 changes to institution practice. Still, as I explain at the end of the post, a strong win for the government could have a much larger impact on how the USPTO operates within the Federal regulatory framework.
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