PTAB/USPTO Update - September 2022

• The USPTO announced new staff additions and promotions to its leadership team.
  • Shirin Bidel-Niyat was elevated to Chief of Staff, having served previously as a senior advisor to Director Vidal.
  • Russell Lopez joined the USPTO as its Chief Communications Officer (CCO), having served previously as communications director for the California State Lottery.
  • Dede Zecher was promoted to Chief Advisor to the Director, having worked previously for the USPTO for 15 years.

Notices, Guidance, and Requests

• Performance Review Board, 87 Fed. Reg. 52753 (August 29, 2022) (Announcing the appointment of persons to serve as members of the USPTO’s Performance Review Board (PRB))
• Submission of Comments Regarding the Patent Subject Matter Eligibility Guidance, 87 Fed. Reg. 53736 [Comments due by October 15, 2022] (USPTO is seeking public feedback on its existing patent subject matter eligibility guidance that was put in place in 2019)
• Request for Comments on Director Review, Precedential Opinion Panel Review, and Internal Circulation and Review of Patent Trial and Appeal Board Decisions, 87 Fed. Reg. 43249 (July 20, 2022) [Written comments due by September 19, 2022] (USPTO is seeking public comments on practices and policies for the review of PTAB decisions, including seeing input on Director review, Precedential Opinion Panel (POP) review, and internal circulation and review of PTAB decisions)

Final Rules

• There are no new final rules.

Interim Rules

• There are no new interim rules.

Proposed Rules

• Standardization of the Patent Term Adjustment Statement Regarding Information Disclosure Statements, 87 Fed. Reg. 41267 (July 12, 2022) [Comments period closes September 12, 2022] (proposing to amend the rules of practice pertaining to patent term adjustment to require that the patent term adjustment statement regarding information disclosure statements be submitted on an Office form)
• Establishing Permanent Electronic Filing for Patent Term Extension Applications, 87 Fed. Reg. 27043 (May 6, 2022) [Comments period closed on July 5, 2022] (proposing to amend the Rules of Practice in Patent Cases to require that patent term extension (PTE) applications, interim PTE applications, and any related submissions to the USPTO be submitted electronically via the USPTO patent electronic filing system (EFSWeb or Patent Center))

PTAB Decisions

• New Precedential PTAB Decisions
  • Code200, UAB v. Bright Data, Ltd., IPR2022-00861 & IPR2022-00862, Paper 18 (Aug. 23, 2022) [AIA § 314(a), vacating decision denying institution – analysis of General Plastic factors relating to a second-filed petition when the first-filed petition was not evaluated on the merits] (sua sponte Director review decision)
• New Informative PTAB Decisions
  • There are no new informative PTAB decisions.

New Requests for POP Review

• Daiichi Sankyo, Inc. et al v. Seagen Inc. f/k/a Seattle Genetics, Inc. (PGR2021-00030) [Requesting POP review of De-Institution Decision on the basis that “[b]y discounting its finding of ‘strong merits’ solely based on a parallel jury verdict, the panel impermissibly abdicated its fact‐finding duty, instead deferring to a district court jury on whether review is warranted, and violated the very guidance on which it purported to rely”]
• Sun Pharmaceutical Industries Limited v. Aurinia Pharmaceuticals Inc. (IPR2022-00617) [Requesting POP review of Institution Decision, presenting the question of whether institution based on arguments developed by the Board for threshold questions of patentability not raised in the petition is ultra vires and contravenes the requirements of 35 U.S.C. § 314(a), SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), and In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) that the petition itself must establish a reasonable likelihood that the petitioner would prevail]
• Freedom to Operate, Inc. v. COMPASS Pathways Limited (PGR2022-00012 and -00018) [Requesting POP review of Institution Decision “in order to confirm that a post-grant proceeding should be instituted where a Petitioner provides expert testimony from highly qualified experts who provide detailed reasoning and scientific basis to support their opinions that, if not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”]
• Liquidia Technologies, Inc. v. United Therapeutics Corporation (IPR2021-00406) [Requesting POP review of Institution Decision, presenting the following question: if a person of ordinary skill in the art must rely on a “research aid” to find a reference, does the date of public accessibility of that reference depend on the date on which the research aid became publicly accessible?]
• Guardant Health, Inc. v. University of Washington (IPR2022-00449 and -00450) [Requesting POP review of Institution Decisions on the basis that the Board decision did not consider all prior Office evaluations, but instead deferred to one examiner’s action while leaving contrary evaluations unaddressed]