[Federal Register Volume 87, Number 138 (Wednesday, July 20, 2022)]
[Notices]
[Pages 43249-43252]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-15475]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2022-0023]
Request for Comments on Director Review, Precedential Opinion
Panel Review, and Internal Circulation and Review of Patent Trial and
Appeal Board Decisions
AGENCY: Patent Trial and Appeal Board, United States Patent and
Trademark Office, U.S. Department of Commerce.
ACTION: Request for Comments.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) seeks public comments on practices and policies for the review
of Patent Trial and Appeal Board (PTAB or Board) decisions. The USPTO
has implemented a number of processes that promote the accuracy,
consistency, and integrity of PTAB decision-making in Leahy-Smith
America Invents Act of 2011 (AIA) proceedings. The USPTO plans to
formalize those processes through notice-and-comment rulemaking. To
inform such rulemaking, and to inform any modifications to the interim
processes pending formalization, the USPTO seeks public comments.
Specifically, the USPTO seeks input on the current interim Under
Secretary of Commerce for Intellectual Property and Director of the
United States Patent and Trademark Office (Director) review process
that allows a party to request Director review of a PTAB final written
decision in inter partes review (IPR) or post-grant review (PGR)
proceedings, and also provides the Director the option to sua sponte
initiate the review of any PTAB decisions (at the Director's
discretion), including institution decisions and decisions on
rehearing. The USPTO also seeks input on the Precedential Opinion Panel
(POP) process. Finally, the USPTO seeks input on the current interim
process for PTAB decision circulation and internal PTAB review. These
processes, implemented by the PTAB prior to issuing decisions and
implemented without Director input, are modeled after practices of the
U.S. Court of Appeals for the Federal Circuit.
DATES: Comment Deadline Date: Written comments must be received on or
before September 19, 2022, to ensure consideration.
ADDRESSES: For reasons of Government efficiency, comments must be
submitted through the Federal eRulemaking Portal at
www.regulations.gov. To submit comments via the portal, enter docket
number PTO-P-2022-0023 on the homepage and click ``Search.'' The site
will provide a search results page listing all documents associated
with this docket. Find a reference to this Request for Comments and
click on the ``Comment Now!'' icon, complete the required fields, and
enter or attach your comments. Attachments to electronic comments will
be accepted in ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. Because comments will be made available for public
inspection, information that the submitter does not desire to make
public, such as an address or phone number, should not be included in
the comments.
Visit the Federal eRulemaking Portal (www.regulations.gov) for
additional instructions on providing comments via the portal. If
electronic submission of comments is not feasible due to a lack of
access to a computer and/or the internet, please contact the USPTO
using the contact information below for special instructions regarding
how to submit comments by mail or by hand delivery, based on the
public's ability to obtain access to USPTO facilities at the time.
FOR FURTHER INFORMATION CONTACT: Kalyan Deshpande, Vice Chief
Administrative Patent Judge; Amanda Wieker, Acting Senior Lead
Administrative Patent Judge; or Melissa Haapala, Vice Chief
Administrative Patent Judge, at 571-272-9797.
SUPPLEMENTARY INFORMATION:
Background
Development of This Request for Comments
On September 16, 2011, the AIA was enacted into law (Pub. L. 112-
29, 125 Stat. 284 (2011)). The AIA established the PTAB, which is made
up of administrative patent judges (APJs) and four statutory members,
namely the USPTO Director, the USPTO Deputy Director, the USPTO
Commissioner for Patents, and the USPTO Commissioner for Trademarks. 35
U.S.C. 6(a). The Director is appointed by the President, by and with
the advice and consent of the Senate. 35 U.S.C. 3(a)(1). APJs are
appointed by the Secretary of Commerce in consultation with the
Director. Id. 6(a). The PTAB hears and decides ex parte appeals of
adverse decisions by examiners in applications for patents; appeals of
reexaminations; and proceedings under the AIA, including IPRs, PGRs,
covered business method (CBM) patent reviews,\1\ and derivation
proceedings, in panels of at least three members. Id. 6(b), (c). Under
the statute, the Director designates the members of each panel. Id.
6(c). The Director has delegated that authority to the Chief Judge of
the Board. See PTAB Standard Operating Procedure 1 (Rev. 15) (SOP1),
Assignment of Judges to Panels, https://go.usa.gov/xtdt2.
---------------------------------------------------------------------------
\1\ Under section 18 of the AIA, the transitional program for
post-grant review of CBM patents sunset on September 16, 2020. AIA
18(a). Although the program has sunset, existing CBM proceedings,
based on petitions filed before September 16, 2020, remain pending.
---------------------------------------------------------------------------
35 U.S.C. 6(c) states that ``[o]nly the Patent Trial and Appeal
Board may grant rehearings'' of Board decisions. In United States v.
Arthrex, Inc., the U.S. Supreme Court (Court) held that the
Appointments Clause of the Constitution (art. II, sec. 2, cl. 2) and
the supervisory structure of the USPTO require that the Board's final
decisions must be subject to review by the Director, a principal
officer of the United States. See United States v. Arthrex, Inc., 141
S. Ct. 1970, 1986 (2021). The Court determined that ``35 U.S.C. 6(c) is
unenforceable as applied to the Director insofar as it prevents the
Director from reviewing the decisions of the PTAB on his own.'' Id. at
1987. The Court explained that:
this suit concerns only the Director's ability to supervise APJs
in adjudicating petitions for inter partes review. We do not address
the Director's supervision over other types of adjudications
conducted by the PTAB, such as the examination process for which the
Director has claimed unilateral authority to issue a patent.
Id. The Court thus held that the Director has the discretion to review
IPR final written decisions rendered by APJs, and, upon review, the
Director may issue decisions on behalf of the Board. Id. at 1988.
On June 29, 2021, the USPTO implemented an interim process for
Director review. At that time, the interim Director review process
provided that the Director may initiate Director review of any PTAB
final
[[Page 43250]]
written decision sua sponte, and a party to a PTAB proceeding may
request Director review of an IPR or PGR final written decision. To
request Director review, a party to a final written decision must
concurrently: (1) enter a Request for Rehearing by the Director into
PTAB E2E, the PTAB's filing system, and (2) submit a notification of
the Request for Rehearing by the Director to the USPTO by email to
[email protected], copying counsel for all
parties. Id.
The USPTO further published Arthrex Q&As, updated on December 4,
2021, available at https://go.usa.gov/xtDnS (superseded on April 22,
2022, by the ``Interim process for Director review'' web page,
available at https://go.usa.gov/xuHwP). As explained in the Arthrex
Q&As, Director review is a de novo review that may address any issue of
fact or law. A party may not make new arguments or submit new evidence
with a request for Director review unless permitted by the Director.
Also, a party may only request Director review of a final written
decision issued in an IPR or PGR. At this time, the USPTO does not
accept requests for Director review of other decisions, including
decisions on institution and Board ex parte appeal decisions. Third
parties may not request Director review or submit comments concerning
Director review of a particular case unless comments are requested by
the Director. Further, the POP review process outlined in the Board's
Standard Operating Procedure 2 (Rev. 10), available at https://go.usa.gov/xu4PT, remains in effect and unchanged.
On April 22, 2022, the USPTO published two web pages to increase
openness as it formalizes the Director review process. The USPTO
published an ``Interim process for Director review web page,'' setting
forth more details on the interim process and some additional
suggestions for parties who wish to request Director review. The
suggestions include guidance on focusing and prioritizing issues, and
strongly encourage parties to provide a priority-ranked list of the
issues being raised, with a brief explanation of each issue and a brief
explanation of the rationale for the prioritized-ranking of them. The
USPTO also published a web page providing the status of all Director
review requests, available at https://go.usa.gov/xuHwE. The status web
page includes a spreadsheet that is updated monthly, as well as
information about the proceedings in which Director review has been
granted.
On May 25, 2022, and June 17, 2022, the USPTO further updated the
``Interim process for Director review'' web page. The first update
explains that although the Office does not accept requests for Director
review of institution decisions in AIA proceedings, the Director has
always retained and continues to retain the authority to review such
decisions sua sponte after issuance. If the Director sua sponte
initiates Director review of an institution decision, the parties and
the public will be notified, and the Director may order party and
amicus briefing. The second update made two modifications. First, the
update specifies that if a requesting party believes that the issue
presented for Director review is an issue of first impression, the
party should indicate that in the email requesting Director review.
Second, the update explains that, in anticipation of this Request for
Comments, any preliminary feedback to the Director review suggestion
email box ([email protected]) could be submitted
through July 11, 2022.
The Interim Director Review Process
The interim Director review process follows existing PTAB rehearing
procedures under 37 CFR 42.71(d) and Standard Operating Procedure 2.
Under the interim process, a Request for Rehearing by the Director must
be filed within 30 days of entry of the Board's final written decision
or a decision by the Board granting rehearing of a final written
decision. See 37 CFR 42.71(d)(2). A request for Director review of a
decision remanded by the Federal Circuit for further proceedings
consistent with Arthrex must be filed within 30 days of the remand
order, unless the Federal Circuit sets a different deadline for filing
the Director review request. The Director may choose to extend the
rehearing deadline for good cause on a party's request before the due
date. A timely Request for Rehearing by the Director will be considered
a request for rehearing under 37 CFR 90.3(b) and will reset the time
for appeal or civil action as set forth in that rule. Requests for
Rehearing by the Director are limited to 15 pages (see 37 CFR
42.24(a)(1)(v)), and the Director will not consider new evidence or
arguments submitted with a Director review request. At this time, there
is no fee for requesting Director review.
Moreover, under the interim process, parties are limited to
requesting either: (1) Director review, or (2) rehearing by the
original Board panel. Parties may also request Director review of a
Board decision that results from a rehearing grant, but not a Board
decision to deny rehearing. Requests for both Director review and panel
rehearing of the same decision are treated as a request for Director
review only.
When a party submits a request for Director review, the USPTO
catalogs the request and reviews it to ensure compliance with the
interim Director review requirements. If the request is compliant, it
is entered into the record of the corresponding proceeding as ``Exhibit
3100--Director Review Request.'' If the request is not compliant, the
USPTO will attempt to work with the party making the request to rectify
any areas of noncompliance. If the request is not compliant, for
example, because it was submitted after the deadline, it will not be
considered because it will be untimely.
Each request for Director review is then routed to and considered
by an Advisory Committee that the Director has established to assist
with the process. The Advisory Committee currently has 11 members and
includes representatives from various business units within the USPTO,
who serve at the discretion of the Director. The Advisory Committee
currently comprises members from the Office of the Under Secretary (not
including the Director), the PTAB (not including members of the
original panel for each case under review), the Office of the
Commissioner for Patents (not including any persons involved in the
examination of the challenged patent), the Office of the General
Counsel, and the Office of Policy and International Affairs. The
Advisory Committee meets periodically to evaluate each request for
Director review and recommends to the Director which decisions to
review. Advisory Committee meetings may proceed with less than all
members in attendance, as long as a quorum of seven members is present
for each meeting.
The Advisory Committee reviews each Director review request for,
among other things, issues that involve an intervening change in the
law or USPTO procedures or guidance; material errors of fact or law in
the PTAB decision; matters that the PTAB misapprehended or overlooked;
novel issues of law or policy; issues on which PTAB panel decisions are
split; issues of particular importance to the USPTO or the patent
community; or inconsistencies with USPTO procedures, guidance, or
decisions.\2\ The Advisory Committee
[[Page 43251]]
then presents the Director with each Director review request, the
associated arguments and evidence, and the recommendation of the
Advisory Committee to determine whether to grant or deny the request.
The Director also may consult others in the USPTO on an as-needed
basis, so long as those individuals do not have a conflict. Although
the Advisory Committee and other individuals in the USPTO may advise
the Director on whether a decision merits review, the Director has sole
discretion to grant or deny review.\3\ The Director's decision to grant
or deny a request will be communicated directly to the parties in the
proceeding through PTAB E2E. Director review grants will be posted on
the Director review status web page. Director review denials can be
found on the Director review status spreadsheet, which is updated
monthly and posted on the Director review status web page.
---------------------------------------------------------------------------
\2\ No member of the Advisory Committee may participate in
considering a request for Director review if that member has a
conflict of interest under the U.S. Department of Commerce USPTO
Summary of Ethics Rules, available at https://go.usa.gov/xJ7wF. PTAB
APJs who are Advisory Committee members will also follow the
guidance on conflicts of interest set forth in the Board's SOP1, and
will recuse themselves from any discussion involving cases on which
they are paneled.
\3\ If the Director has a conflict with the parties, patent, or
counsel in the decision, she will be recused, and the required
action will be taken by the Deputy Director. If the position of the
Deputy Director is vacant, or if the Deputy Director also has a
conflict of interest, the required action will be taken by the
Commissioner for Patents.
---------------------------------------------------------------------------
In addition to allowing parties to request Director review under
the interim process, the Director may choose to conduct a sua sponte
Director review. The Director may initiate a sua sponte review of any
PTAB decision, including institution decisions, or a corresponding
decision on rehearing (whether denying or granting rehearing). As
explained in more detail below, PTAB Executive Management (the PTAB
Chief Judge, Deputy Chief Judge, Vice Chief Judges, and Senior Lead
Judges) may identify decisions as candidates for sua sponte Director
review. The Director may also convene the Advisory Committee to make
recommendations on decisions that the Director is considering for sua
sponte Director review. If the Director initiates a sua sponte review,
the parties will be given notice and may be given an opportunity for
briefing. The public also will be notified, and the Director may
request amicus briefing. If briefing is requested, the USPTO will set
forth the procedures to be followed.
At this time, the USPTO does not accept requests for Director
review of decisions on institution in AIA proceedings or appeal
decisions. To request review of those types of decisions (and other
decisions), parties may request review by the POP, which, by default,
includes the Director, the Commissioner for Patents, and the PTAB Chief
Judge. As a general matter, the interim process for Director review
does not alter the current POP process. As explained above and below,
however, the USPTO seeks comments on the POP process in view of the
Director review process.
On July 6, 2022, the USPTO further updated the ``Interim process
for Director review'' web page to make clear that: (1) decisions made
on Director review are not precedential by default, and instead are
precedential only upon the Director's designation; and (2) final
written decisions by the Director after Director review are appealable
to the U.S. Court of Appeals for the Federal Circuit using the same
procedures for appealing Board final written decisions. See ``Interim
process for Director review'' web page, Sec. Sec. 2, 14; 37 CFR 90.3.
As of July 5, 2022, the USPTO had received 204 requests for
Director review under the interim process. Of those requests, the
Director review process was completed for 198 requests. Of the 198
completed requests, 5 requests were granted, 1 request was withdrawn,
and the remaining requests were denied. Eleven requests did not meet
the requirements for Director review and were not considered.
Additionally, Director Kathi Vidal has initiated sua sponte Director
review in four cases. Andrew Hirshfeld, former Commissioner for
Patents, who was performing the functions and duties of the Director
prior to Director Vidal's confirmation, granted Director review and
rehearing in Ascend Performance Materials Operations LLC v. Samsung SDI
Co., IPR2020-00349, Paper 57 (Nov. 1, 2021) (Order granting Director
review request); Proppant Express Investments, LLC v. Oren
Technologies, LLC, IPR2018-00733, Paper 95 (Nov. 18, 2021) (Order
granting Director review request); and each of Apple Inc. v.
Personalized Media Communications LLC, IPR2016-00754, Paper 50 (Mar. 3,
2022), and IPR2016-01520, Paper 47 (Mar. 3, 2022) (Orders granting
Director review requests).\4\ Recently, Director Vidal sua sponte
ordered a Director review of the Final Written Decisions in each of
MED-EL Elektromedizinische Ger[auml]te Ges.m.b.H. v. Advanced Bionics
AG, IPR2020-01016, Paper 43 (June 1, 2022), and IPR2021-00044, Paper 41
(June 1, 2022) (Orders initiating Director review); and of the
Decisions on Institution in OpenSky Industries, LLC v. VLSI Technology
LLC, IPR2021-01064, Paper 41 (June 7, 2022) (Order initiating Director
review), and Patent Quality Assurance, LLC v. VLSI Technology LLC,
IPR2021-01229, Paper 31 (June 7, 2022) (Order initiating Director
review). Director Vidal also granted a request for Director review of
the Final Written Decision in Nested Bean, Inc. v. Big Beings USA Pty
Ltd., IPR2020-01234, Paper 36 (June 17, 2022) (Order granting Director
review and authorizing additional briefing).
---------------------------------------------------------------------------
\4\ The U.S. Court of Appeals for the Federal Circuit upheld Mr.
Hirshfeld's authority to decide requests for Director review,
finding that the delegation of the function of Director review did
not violate the Appointments Clause (U.S. Const. art. II, Sec. 2,
cl. 2); the Federal Vacancies Reform Act (5 U.S.C. 3345 et seq.); or
the Constitution's separation of powers (U.S. Const. art. II, Sec.
2, cl. 2) [Is it correct that this citation should be the same as
the one for the Appointments Clause?]. See Arthrex, Inc. v. Smith &
Nephew, Inc., 35 F.4th 1328, 1333-1340 (Fed. Cir. 2022).
---------------------------------------------------------------------------
The USPTO plans to formalize the Director and POP review processes
through notice-and-comment rulemaking. To inform such rulemaking, and
to inform any modifications to the interim processes pending
formalization, the USPTO seeks public comments.
The Interim Process for PTAB Decision Circulation and Internal PTAB
Review
Since May 2022, the USPTO has been using an interim process for
PTAB decision circulation and internal PTAB review to promote
consistent, clear, and open decision-making. See ``Interim process for
PTAB decision circulation and internal PTAB review,'' available at
https://go.usa.gov/xJ7fq. Under the interim process, certain categories
of PTAB decisions are circulated to a pool of non-management judges
(the Circulation Judge Pool (CJP)) prior to issuance. These decisions
include all AIA institution decisions; AIA final written decisions; AIA
decisions on rehearing; decisions on remand from the Federal Circuit;
inter partes reexamination appeal decisions; and designated categories
of ex parte appeal, ex parte reexamination appeal, and reissue appeal
decisions. Judges may, at their option, circulate other types of
decisions for CJP review.
The CJP comprises a representative group of at least eight non-
management PTAB judges who collectively have technical/scientific
backgrounds and legal experience representative of the PTAB judges as a
whole. The CJP is modeled after both the Federal Circuit's previous
office of the Senior Technical Assistant and the Federal Circuit's 10-
day circulation process for precedential decisions. See United States
Court of Appeals for the Federal Circuit, Internal Operating
Procedures, Redlined Copy, 18 (Mar. 1, 2022), available at https://go.usa.gov/xJ7fx (describing the previous office of the Senior
Technical Assistant); and United States Court of
[[Page 43252]]
Appeals for the Federal Circuit, Internal Operating Procedures, 10.5
(Mar. 1, 2022), available at https://go.usa.gov/xJ7fg (describing the
10-day circulation process for precedential decisions).
For each reviewed PTAB decision, the CJP provides the panel with
information regarding potential conflicts or inconsistencies with
relevant authority, including PTAB precedential decisions, Director-
written guidance, and other USPTO policies. The CJP also provides the
panel with information regarding potential inconsistencies with
informative or routine PTAB decisions and suggestions for improved
readability and stylistic consistency. The panel has the final
authority and responsibility for the content of a decision and
determines when and how to incorporate feedback from the CJP. Judges
are required to apply pertinent statutes, binding case law, and written
guidance issued by the Director or the Director's delegate that is
applicable to PTAB proceedings. There is no unwritten guidance
applicable to PTAB proceedings that judges are required to apply.
The CJP also identifies, and brings to the attention of PTAB
Executive Management, notable draft decisions, such as decisions that
address issues of first impression or that appear to be inconsistent
with USPTO policy or involve areas where policy clarification may be
needed. PTAB Executive Management may discuss decisions after issuance
with the Director and/or the Director review Advisory Committee for
consideration for sua sponte Director review, or with the POP Screening
Committee \5\ for consideration for POP review. The CJP has periodic
meetings with PTAB Executive Management to discuss potentially
conflicting panel decisions and general areas for potential policy
clarification. PTAB Executive Management may discuss these issues with
the Director for the purpose of considering whether to issue new or
updated policies through regulation, precedential or informative
decisions, and/or a Director guidance memorandum.
---------------------------------------------------------------------------
\5\ The POP Screening Committee provides recommendations to
Precedential Opinion Panel. The Screening Committee comprises of the
members of the Precedential Opinion Panel, or their designees,
typically in equal numbers (for example, 3 designees of each of the
Chief Judge, Commissioner for Patents, and Director). See PTAB
Standard Operating Procedure 2 (Rev. 10) (SOP2), Precedential
Opinion Panel to Decide Issues of Exceptional Importance Involving
Policy or Procedure and Publication of Decisions and Designation or
De-Designation of Decisions as Precedential or Informative, https://go.usa.gov/xPMqx.
---------------------------------------------------------------------------
Any panel member, at his or her sole discretion, may also
optionally consult with one or more members of PTAB management (i.e.,
PTAB Executive Management and Lead Judges) regarding a decision prior
to issuance. If consulted, PTAB management may provide information
regarding the consistent application of USPTO policy, applicable
statutes and regulations, and binding case law. Adoption of any
suggestions provided by PTAB management based on such consultation is
optional. Unless consulted by a panel member, PTAB management does not
make suggestions to the panel on any pre-issuance decisions, either
directly or indirectly through the CJP.
The Office recognizes that it is important that the PTAB maintain a
consistent and clear approach to substantive areas of patent law and
PTAB-specific procedures, while maintaining open decision-making. The
interim PTAB decision circulation and internal review processes promote
decisional consistency and open decision-making by reinforcing that the
adoption of all CJP and requested PTAB management feedback is optional,
that members of PTAB management do not provide feedback on decisions
pre-issuance unless they are a panel member or a panel member requests
such feedback, and that the PTAB panel has the final authority and
responsibility for the content of a decision. Additionally, the process
provides a mechanism by which the Director may be made aware of
decisions to consider for sua sponte Director review or POP review, and
of areas to consider for issuing new, or modified, USPTO policy to
promote a strong intellectual property system. The interim process
makes clear that the Director is not involved, pre-issuance, in
directing or otherwise influencing panel decisions.
The USPTO seeks feedback on the PTAB decision circulation and
internal review processes.
Request for Public Comments
The USPTO seeks written public comments on the interim Director
review process, the POP review process, and the PTAB decision
circulation and internal review processes. The USPTO welcomes any
comments from the public on the processes and is particularly
interested in the public's input on the questions and requested
information noted below.
1. Should any changes be made to the interim Director review
process, and if so, what changes and why?
2. Should only the parties to a proceeding be permitted to request
Director review, or should third-party requests for Director review be
allowed, and if so, which ones and why?
3. Should requests for Director review be limited to final written
decisions in IPR and PGR? If not, how should they be expanded and why?
4. Should a party to a proceeding be able to request both Director
review and rehearing by the merits panel? If so, why and how should the
two procedures interplay?
5. What criteria should be used in determining whether to initiate
Director review?
6. What standard of review should the Director apply in Director
review? Should the standard of review change depending on what type of
decision is being reviewed?
7. What standard should the Director apply in determining whether
or not to grant sua sponte Director review of decisions on institution?
Should the standard change if the decision on institution addresses
discretionary issues instead of, or in addition to, merits issues?
8. Should there be a time limit on the Director's ability to
reconsider a petition denial? And if so, what should that time limit
be?
9. Are there considerations the USPTO should take with regard to
the fact that decisions made on Director review are not precedential by
default, and instead are made and marked precedential only upon
designation by the Director?
10. Are there any other considerations the USPTO should take into
account with respect to Director review?
11. Should the POP review process remain in effect, be modified, or
be eliminated in view of Director review? Please explain.
12. Are there any other considerations the USPTO should take into
account with respect to the POP process?
13. Should any changes be made to the interim PTAB decision
circulation and internal review processes, and if so, what changes and
why?
14. Are there any other considerations the USPTO should take into
account with respect to the interim PTAB decision circulation and
internal review processes?
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2022-15475 Filed 7-19-22; 8:45 am]
BILLING CODE 3510-16-P