United States Patent and Trademark Office Rescinds 2022 Memo Addressing Discretionary Denial Procedures
The USPTO rescinded the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” removing the 2022 memorandum of former USTPO Director, Kathi Vidal. The bulletin was published on February 28.
The new directive instructs interested parties to refer to PTAB precedent. This includes Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A).
By rescinding the Memorandum, the USPTO returns the PTAB’s Fintiv analysis to weighing the following six factors relating to “efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”:
1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision;
3. investment in the parallel proceeding by the court and the parties;
4. overlap between issues raised in the petition and in the parallel proceeding;
5. whether the petitioner and the defendant in the parallel proceeding are the same party; and
6. other circumstances that impact the Board’s exercise of discretion, including the merits.
This may be seen as an effort to minimize potential conflict that can arise in both Court and PTAB proceedings. With more discretion, this development could also lead to the USPTO denying institution of reviews of patents by the Office when there is parallel litigation.
Although it is still too early to interpret the effects that the memo’s rescission will have, and what new guidance may ultimately replace it, the USPTO’s notice announcing the recission did state that:
“To the extent any other PTAB or Director Review decisions rely on the Memorandum, the portions of those decisions relying on the Memorandum shall not be binding or persuasive on the PTAB.”
The patent attorneys at Renner Otto will continue to monitor these and other USPTO developments and remain up to date in practice with policy and the underlying legal considerations our clients will need to evaluate in this ever-evolving intellectual property landscape.
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