United States: Trending At The PTAB: Changes To Director Review, Hearings

This summer brought changes to both the director review process and oral hearing guide at the Patent Trial and Appeal Board. This article will discuss these new rules and how they may affect PTAB practice.

Director Review

On July 24, the U.S. Patent and Trademark Office announced¹ that it was revising its interim procedures for implementing the director's "authority to provide a means of reviewing PTAB decisions," confirmed in the U.S. Supreme Court's 2021 decision in U.S. v. Arthrex, Inc.,² as it continues to work toward a final rule.

As of that date, the Precedential Opinion Panel process was officially replaced by a revised interim director review process for America Invents Act trials and a newly created Appeals Review Panel process for ex parte appeals and reexaminations.³ The revised interim director review process includes several notable changes.

First — and perhaps most significantly — the interim director review process established in the immediate wake of Arthrex allowed for parties to petition for director review of only final written decisions. Under the new procedures, requests for director review can now be made for institution decisions and rehearing decisions, in addition to final written decisions.⁴ Although director review of institution decisions can be requested, the resulting decisions remain ineligible for further appeal.⁵

Second, the revised director review process gives the director authority to convene a Delegated Rehearing Panel to review a given board decision and determine whether to grant a rehearing.⁶ The director may exercise this authority either sua sponte or at the request of a party.

The Delegated Rehearing Panel will comprise three members of the PTAB who are designated by the director, selected from the chief judge, deputy chief judge, vice chief judges and senior lead judges, to the exclusion of judges that served on the panel that issued the underlying decision.⁷ An aggrieved party may file one request for rehearing — but cannot request further director review — of a Delegated Rehearing Panel decision.⁸ However, the director still retains the authority to review Delegated Rehearing Panel decisions sua sponte.⁹

The revised director review process indicates that director review of an institution decision, rehearing request or final written decision is appropriate in cases presenting "an abuse of discretion" or "important issues of law or policy."¹⁰ Director review of a final written decision may also be appropriate in cases where there is alleged to be "erroneous findings of material fact" or "erroneous conclusions of law."¹¹

Similarly, the director is granted the authority to convene an Appeals Review Panel to consider decisions in ex parte appeals and reexaminations.¹² Notably, however, Appeals Review Panel review may only be initiated by the director, and cannot be requested by a party.¹³

The Appeals Review Panel is composed of three members of the board, selected from the director, the deputy director, the commissioner for patents, the commissioner for trademarks and the administrative patent judges.¹⁴ By default, however, the Appeals Review Panel comprises the director, the commissioner for patents and the chief judge of the PTAB.¹⁵

The USPTO website maintains a summary of the proceedings in which a request for director review has been granted, or issued sua sponte, under the interim program,¹⁶ as well as a spreadsheet indicating the disposition of requests to date.¹⁷

Since the update to the director review process on July 24, there have been 31 requests for director review, and there have been five denied requests and one granted — Vector Flow Inc. v. HID Global Corp. In the first seven months prior to July 24, there were a total of 31 requests for director review and/or sua sponte grants.

Thus, the number of requests for director review in the two months following the change in the interim director review process is comparable to all of 2023 prior to the change. It remains to be seen whether this sudden increase in requests for director review will be the new normal.

Updated Oral Hearing Guide

The updated Oral Hearing Guide¹⁸ was published Aug. 31.¹⁹ Although the board indicates that the guide has merely been updated "to reflect current practice,"²⁰ the 2023 guide includes several changes with respect to the pre-COVID, 2019 edition²¹ of which practitioners should be made aware. These changes include:

• The introduction of an "all-virtual hearing option" for AIA trials;
• New requirements for submitting demonstratives in ex parte appeals;
• Clarification of procedures for requesting admission pro hac vice; and
• New procedures allowing members of the public to request to attend PTAB hearings remotely.

All-Virtual Hearing Option

Although not explicitly designated as such in the guide itself,²² the USPTO announcement of the updated guide touts "[t]he addition of an all-virtual hearing option for America Invents Act (AIA) trials."²³ In this regard, the 2023 guide does note that, when requesting oral argument:

This begs the question: What is "current office policy" in the case when one party prefers an in-person hearing and the other does not? Prior to the issuance of the 2023 guide, scheduling orders in AIA trials routinely indicated that the "PTAB will only conduct an in-person hearing when requested by all parties."²⁴

In the few weeks after the 2023 guide was issued, some scheduling orders have paraphrased the above language from the guide,²⁵ while noting "that the Board may not be able to honor the parties' preferences due to, among other things, the availability of hearing room resources, the needs of the panel, and USPTO policy at the time of the hearing."²⁶

However, others include the same old admonition that the "PTAB will only conduct an in-person hearing when requested by all parties."²⁷ Thus, it would appear that "the needs of the panel, and USPTO policy" will continue to disfavor in-person hearings, unless both parties request one.

Demonstratives

The new guide requires any demonstratives intended to be used at hearings in ex parte appeals to be explicitly added to the electronic file wrapper via the USPTO Patent Center at least 10 days before the hearing.²⁸

Pro Hac Vice Admissions

In order to present arguments to the board, counsel that are not registered to practice before the USPTO must be admitted pro hac vice.²⁹ The 2023 guide clarifies that "[a] request for [admission] pro hac vice must be filed in the form of a petition in an ex parte appeal, and in the form of a motion in an AIA trial."³⁰

The 2023 guide also indicates that requests for such admission in reexamination and ex parte appeals should "confirm that the practitioner to be admitted has read and is familiar with 37 CFR, Part 41, particularly, §§ 41.30-41.54, and 37 CFR §§11.19(a) and 11.101 et seq., as well as set forth good cause as to why pro hac vice admission should be granted."³¹

Public Access to PTAB Hearings

In the 2019 guide, the PTAB indicated that it "generally does not offer telephonic or audiovisual connections to inventors or the public. While the attorney of record may participate in oral hearings via a video or telephonic connection, non-participants merely wishing to observe the oral hearing must do so in person."

Under the new guide, the PTAB invites "[m]embers of the public ... [to] request to remotely view any public hearing."³² However, any member of the public wishing to view a hearing remotely online or from a USPTO office location other than the designated hearing location must request access via email at least five days in advance of the hearing.³³

In either case, the guide emphasizes that, "[d]ue to the availability of resources, it may not be possible to grant the request in all instances" and emphasizes that "a request for remote viewing does not allow the requestor to participate in the hearing."³⁴

Footnotes

1. USPTO, Patent Trial and Appeal Board, "Revised Interim Director Review Process," https://www.uspto.gov/patents/ptab/decisions/revised-interim-director-review-process (July 24, 2023).

2. 141 S. Ct. 1970, 1987 (2021).

3. Supra note 1.

4. Id. at No. 2.A-B.

5. Id. at 5.C.i.

6. Id. at 5.A.iii.

7. USPTO, Patent Trial and Appeal Board, "Delegated Rehearing Panel," https://www.uspto.gov/patents/ptab/decisions/delegated-rehearing-panel, at No. 2.A (July 24, 2023).

8. Id. at No. 2.F.ii-iii.

9. Id. at No. 2.B.

10. Id. at No. 5.A.

11. Id.

12. USPTO, Patent Trial and Appeal Board, "Appeals Review Panel," https://www.uspto.gov/patents/ptab/appeals-review-panel, at No. 1 (July 24, 2023).

13. Id.

14. Id. at No. 2.

15. Id.

16. USPTO, Patent Trial and Appeal Board, "Status of Director Review requests," https://www.uspto.gov/patents/patent-trial-and-appeal-board/status-director-review-requests (last updated Sept. 15, 2023).

17. USPTO, Patent Trial and Appeal Board, "Director Review requests spreadsheet," https://www.uspto.gov/sites/default/files/documents/director_review_requests_20230915_.xlsx (last updated Sept. 15, 2023)

18. USPTO, Patent Trial and Appeal Board, "Oral Hearing Guide," https://www.uspto.gov/sites/default/files/documents/PTAB%20Hearings%20Guide.pdf (Aug. 31, 2023).

19. USPTO, Patent Trial and Appeal Board, "Patent Trial and Appeal Board publishes updated Oral Hearing Guide," https://www.uspto.gov/subscription-center/2023/patent-trial-and-appeal-board-publishes-updated-oral-hearing-guide# (Aug. 31, 2023).

20. Id.

21. USPTO, Patent Trial and Appeal Board, "Guide to the administration of oral hearings before the Patent Trial and Appeal Board," https://www.uspto.gov/sites/default/files/documents/PTAB%20Hearings%20Guide.pdf (Aug. 30, 2019).

22. The phrase "all-virtual hearing option"—or even the term "virtual"—is not used in the 2023 Guide itself.

23. Supra note 19.

24. See, e.g., IPR2023-00954, Paper 10, at *7 (P.T.A.B. Aug. 30, 2023); IPR2023-00344, Paper 12, at *7 (P.T.A.B. Jul. 17, 2023).

25. See, e.g., IPR2023-00153 and -00154, Paper 10, at *6 (P.T.A.B. Sept. 5, 2023); IPR2023-00486 and -00488, Paper 13, at *7 (P.T.A.B. Sept. 19, 2023).

26. Id.

27. See, e.g., IPR2023-00589, Paper 12, at *7 (P.T.A.B. Sept. 13, 2023); IPR2023-00664, Paper 9, at *7 (P.T.A.B. Sept. 21, 2023).

28. 2023 Guide at 9.

29. See 37 CFR § 41.5(a) (addressing reexaminations and ex parte appeals); 37 CFR § 42.10(c) (addressing AIA proceedings).

30. 2023 Guide at 11.

31. Id. at 12.

32. 2023 Guide at 16.

33. Id.

34. Id.

Originally published by Law360.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.