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USPTO Invites Patent Owner Input To Stem Tide Of Reexamination Proceedings

Holly Kane — Thu, 02 Apr 2026 22:31:07 +0000

After issuing an announcing an imagined “AI-assisted evaluator for patent eligibility determinations,” the USPTO issued another press release on April 1, 2026, that stakeholders need to take seriously. The real notice relates to ex parte reexamination proceedings, and announced a new process permitting patent owners to weigh in before the USPTO decides whether to proceed with reexamination.

According to the USPTO , the Director is waiving existing rules that do not provide for early patent owner input, due to the “extraordinary situation” of “the recent increased volume of ex parte reexamination requests.” Having expanded the use of discretionary denials to limit Inter Partes Review (IPR) proceedings, it seems the USPTO now seeks to stem the tide of ex parte reexamination proceedings.

The Current Reexamination SNQ Paradigm

Under 35 U.S.C. § 302, “Any person at any time may file a request for reexamination … of any claim of a patent on the basis of any prior art ….” Under 35 U.S.C. § 303, “[w]ithin three months following the filing of a request for reexamination … the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request ….” Under 35 U.S.C. § 304, “[i]f … the Director finds that a substantial new question of patentability … is raised, the determination will include an order for reexamination of the patent for resolution of the question.”

Thus, unlike the IPR statute that gives the Director discretion whether to institute an IPR proceeding, the reexamination statute seems to require the Director to order reexamination if it is found that a substantial new question of patentability (“SNQ”) has been raised. But see 35 U.S.C.§ 325(d) (referenced below).

The statutory reexamination scheme does not expressly provide for patent owner input until after an SNQ determination has been made. Under 35 U.S.C. § 304, “The patent owner will be given a reasonable period … within which he may file a statement on such [SNQ], including any amendment … for consideration in the reexamination.” Indeed, under current USPTO guidance “[t]he patent owner has no right to file a statement subsequent to the filing of [a request for reexamination] prior to the order for reexamination.” See MPEP § 2249.

The New Process for Input from Both Sides

The Notice explains that the new process will enable the USPTO to make SNQ determinations with “the benefit of relevant information from patent owner[s].” The patent owner pre-order paper must be filed “no later than the date that is 30 days from the date of service of the request on the patent owner” and “be limited to thirty (30) pages or fewer.” Regarding the content:

The [patent owner pre-order] paper must be limited to arguments or facts to support patent owner’s position that, despite the argued teaching(s) in the request, the Office should maintain the decision of patentability made during examination … after considering the alleged new teaching(s) in the request for reexamination.

On the other hand, the pre-order paper “should not address why the USPTO should exercise discretion under 35 U.S.C. § 325(d),” which is considered after an SNQ determination has been made. Further, arguments regarding whether an alleged teaching is “new” “should not be included in a patent owner pre-order paper,” because those arguments can be presented in a patent owner’s statement under 37 CFR §1.530 or in a patent owner’s response to an Office action” during the reexamination proceeding.

Under the new process, the reexamination requester will not generally be permitted to respond to the patent owner’s pre-order paper, but may petition to do so under exceptional circumstances, “such as to address alleged misrepresentations of fact or law or other improper arguments that materially impede the determination of a substantial new question.”

According to the Notice, “[w]hen considering whether to order reexamination, the Office will review the request and the contents of any patent owner pre-order paper and any third party requester responsive paper …. [and] then determine whether the request establishes a substantial new question of patentability.”

Will the New Process Stem the Tide of Reexamination Requests?

The impact of the lower IPR institution rate on reexamination requests is evident in , which show requests have more than doubled in recent months.

While reduced USPTO staffing levels may make it challenging to review these requests in a timely manner, it is not clear that permitting early patent owner input will discourage requests for reexamination, unless it leads to a significant drop in SNQ findings. Indeed, stakeholders on the requester side likely will view the new process as an attempt to make it easier for the USPTO to deny reexamination requests, further limiting opportunities to have the USPTO review its own work and revoke patents that never should have been granted.

Can the USPTO Do This?

The Patlex Corp. v. Mossinghoff case cited in the Notice (758 F.2d 594 (Fed. Cir. 1985)) upheld the USPTO’s current rules that restrict patent owner input prior to the SNQ determination. In that case, the USPTO justified the restrictions in the interests of efficiency, stating that the USPTO “can not accommodate a ‘flurry of paper’ at this [SNQ] stage.”

Although the court found the rules were “within tolerable limits of … the reexamination statute” and did “not violate the due process clause,” it seems likely that the Federal Circuit would uphold new rules implementing a new process that gives patent owners an early opportunity to be heard. Indeed, the USPTO’s justification for the new process implies that increased efficiencies being realized in the Central Reexamination Unit mean that patent owner pre-order papers “can be accommodated” and “should enable the Office to be better able to weed out those requests that do not raise a substantial question of patentability, prior to instituting a full-blown proceeding.”

The set to be published April 26, 2026, includes other significant changes to reexamination practice and sets a public comment period expiring May 30, 2026.

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Overlooked, But Powerful: Ex Parte Reexamination and Inter Partes Review Combination

Aude Peden — Wed, 28 Jan 2026 14:31:09 +0000

In In Re Gesture Technology Partners, LLC, Case No. 2025-1075 (Fed. Cir. December 1, 2025) (“G��ٳܰ��”), the Federal Circuit reinforced the power of ex parte reexaminations as powerful tools for invalidating active and expired patents in combination with inter partes review (“IPR”) by holding that the estoppel provision of 35 U.S.C. § 315(e)(1) does not apply to ongoing ex parte reexaminations because petitioners are not involved in the reexamination proceeding; and that the Patent Office has jurisdiction over ex parte reexaminations concerning expired patents because patent owners maintain some rights after the patent expires, which can create a live case or controversy that can be resolved by an ex parte reexamination.

In Gesture, the patent owner appealed an ex parte reexamination decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) affirming the unpatentability of claims 1-30 of U.S. Patent 7,933,431 (“the ’431 patent”) as either anticipated or obvious. The ex parte reexamination at issue was requested while two IPRs seeking to invalidate all claims of the ’431 patent were pending. One of the two IPRs was petitioned by Unified Patents LLC, an organization of which the ex parte requester is a member. The Board issued a final written decision in each IPR invaliding all but two claims of the ’431 patent. The Federal Circuit has since affirmed both IPR decisions.

Following the final decisions in both IPRs, Gesture petitioned to terminate the pending ex parte reexamination, asserting that, as a member to the Unified Patents IPR, the requester was estopped under 35 U.S.C. § 315(e)(1) from maintaining the pending reexamination proceeding at the Patent Office. The Patent Office denied the petition and concluded that the estoppel provision of § 315(e)(1) does not apply to ongoing ex parte reexaminations. Subsequently, a final office action was issued by an examiner in the ex parte reexamination rejecting the two remaining uncanceled claims of the ’431 patent as anticipated by a prior art, and the Board affirmed the rejection and invalidated all claims of the’431 patent.

On appeal, Gesture argued that the Patent Office erred in determining that the estoppel provision of 35 U.S.C. § 315(e)(1) does not apply to pending ex parte reexamination proceedings. Gesture further argued that the Patent Office has no jurisdiction over the ’431 patent because the ’431 patent is expired.

35 U.S.C. § 315(e)(1) Is Inapplicable to Ongoing Ex Parte Reexamination Proceedings

The Federal Circuit held that “the estoppel provision of 35 U.S.C. § 315(e)(1) is inapplicable against the Patent Office to ongoing ex parte reexamination proceedings.” The Federal Circuit clarified that a petitioner requests an ex parte reexamination but does not maintain the proceeding. The Patent Office does. Moreover, other than the optional reply provided by 35 U.S.C. § 304, the ex parte reexamination statute does not provide for any involvement of the requester in the reexamination proceeding.

Since the promulgation of the Leahy-Smith America Invents Act, the Patent Office’s guidance on § 315(e)(1) and § 325(e)(1) has been that the estoppel provisions do not apply to pending reexamination proceedings. MPEP § 2210. This guidance has now been converted into law by the Federal Circuit.

However, the Patent Office maintains that the estoppel provisions of § 315(e) and § 325(e) “only prohibit the filing of a subsequent request for ex parte reexamination, once estoppel attaches.” MPEP § 2210. So far, the majority of ex parte reexamination proceedings have been terminated due to improper certification under 37 CFR 1.510(b)(6). As such, petitioners may avoid making improper 1.510(b)(6) certification by filing an ex parte reexamination before filing an IPR, in conjunction with the IPR, or any time prior to the issuance of an IPR final written decision. In addition, petitioners may consider pursuing different claims in the IPR and the ex parte reexamination.

The Patent Office Has Jurisdiction Over Ex Parte Reexaminations Concerning Expired Patents

The Federal Circuit also concluded that, similar to IPRs, “the Board has jurisdiction over ex parte reexaminations concerning expired patents.” The Federal Circuit stated that the reasoning it applied for IPRs in Apple Inc. v. Gesture Tech. Partners, LLC, 127 F.4th 364, 368-69 (Fed. Cir. 2025), cert. denied, No. 24-1280 (U.S. Nov. 17, 2025), where it confirmed that the Board has jurisdiction over IPRs concerning expired patents, also applies for ex parte reexaminations. Specifically, “a patent owner maintains some rights after the patent expires, including the right to sue for past damages, which can create a live case or controversy that can be resolved by an ex parte ��油��Բ��پ��ǲ�.”&�Բ��;

Ex Parte Reexamination and IPR Combination

IPR petitioners should consider leveraging ex parte reexaminations in combination with an IPR to enhance the chances of invalidating all claims of a patent. An ex parte reexamination is a passive way of getting at the same outcome as an IPR and can have synergistic invalidating effects as shown in this case. Petitioners may also consider filing an ex parte reexamination in lieu of seeking a joinder on an existing IPR. An ex parte reexamination has several advantages:

1) The estoppel provision of 35 U.S.C. § 315(e)(1) does not apply to a pending ex parte reexamination;

2) Expired patents can be reexamined;

3) The ex parte reexamination can be filed anonymously;

4) The ex parte reexamination is limited to two office actions;

5) The requester does not maintain the proceeding, but can optionally reply to a patent owner preliminary statement;

6) The ex parte reexamination does not require discovery or deposition because the Patent Office maintains the proceeding;

7) There are no word or page limits;

8) The threshold for granting a request for ex parte reexamination is determining the presence of a “substantial new question of patentability” (SNQ); and

9) The proceeding is not subject to a discretionary denial under 35 U.S.C. § 314.

As the landscape of post-grant proceedings continues to evolve, understanding how to strategically combine tools like ex parte reexaminations and IPRs can make a decisive difference in protecting — or challenging — valuable IP assets.

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USPTO Director Takes Control of IPR and PGR Institution Decisions

Courtenay Brinckerhoff — Tue, 21 Oct 2025 17:32:38 +0000

In what some are perceiving as the second blow of a one-two punch against patent trial proceedings conducted at the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), USPTO Director Squires on Friday, October 17, 2025, that he “will determine whether to institute trial for inter partes review (‘IPR’) and post-grant review (‘PGR’) proceedings,” effective October 20, 2025. This new institution decision process builds on recent Director-level (and Acting Director-level) involvement in decisions to deny institution based on , and expands Director-level involvement to institution decisions based on the merits, e.g., based on whether the “there is a reasonable likelihood that the [IPR] petitioner would prevail with respect to at least 1 of the claims challenged.”

The New “Black Box” Institution Decision Process

The USPTO’s October 17, 2025, promises the USPTO will host a “USPTO Hour” webinar to explain the new institution decision process, but such a program is not yet listed on the . Practitioners and stakeholders will welcome further information because the Director’s memorandum does not provide much detail, other than the following points (emphasis added):

“[A]ll petitions referred to the PTAB for consideration of the merits and non-discretionary considerations under the Interim Processes prior to October 20, 2025 will remain with a three-member panel.”
The process for briefing discretionary considerations (as set forth on the Interim Director Discretionary Process ) and the process for briefing the merits and non-statutory considerations will remain the same.
To reach an institution decision, “the Director, in consultation with at least three PTAB judges, will determine whether to institute trials in all IPR and PGR proceedings,” based on “review of discretionary considerations, the merits, and non-discretionary considerations.”
“[I]f the Director determines that institution is appropriate on at least one ground for one challenged claim, the Director will issue a summary notice to the parties granting institution.”
“[I]f the Director determines that institution is not appropriate, whether based on discretionary considerations, the merits, or other non-discretionary considerations, the Director will issue a summary notice denying institution.
Notwithstanding the foregoing, “In proceedings involving novel or important factual or legal issues, the Director may issue a decision on institution addressing those issues.”
“[W]here the Director determines detailed treatment of issues raised in a petition is appropriate ( e.g., complex claim construction issues, priority analysis, or real party in interest determination), the Director may refer the decision on institution to one or more members of the PTAB.”
“Any instituted IPR or PGR proceeding will be referred to a three-member panel of the PTAB to conduct the trial,” with the panel assigned according to

The IPR and PGR statutes already provide that an institution decision “shall be final and non-appealable.” By rendering decisions to deny institution in “summary notices”—presumably without explanation—the USPTO will be leaving patent owners, patent challengers, and the public in the dark as to whether the decision was based on the strength of the patent, a flaw in the petition, or some disqualifying character of the petitioner—or some other basis that could be arbitrary, capricious, or contrary to law. On the other hand, issuing summary notices granting institution will deprive the parties of insight into perceived strengths and weaknesses of the petition that otherwise could inform the trial phase or promote settlement of both the PTAB proceeding and any parallel litigation.

Clamoring for Clarification

Unlike the proposed rulemaking [CB5] on discretionary denials, the Director’s announcement of this new institution decision process was not accompanied by a request for public comments. That should not prevent stakeholders from insisting on clarification of at least the following points:

How will the “at least three PTAB judges” to be consulted at the institution stage be selected? Will the “summary notice” identify them?
Will a “summary notice denying institution” identify (by category) whether the denial was based on discretionary considerations, the merits, and/or other non-discretionary considerations?
Will the parties and/or the public be given notice if the Director refers an institution decision “to one or more members of the PTAB”? Could such a referral result in only a “summary notice”? Will the “summary notice” identify the “one or more members of the PTAB” to whom the institution decision was referred?
For instituted proceedings, will the parties and/or the public be given notice of any overlap between the assigned merits panel and any PTAB judges involved with the institution decision?

How Will The New Process Strengthen the U.S. Patent System?

The Director’s memorandum states that the new process is being adopted “[t]o improve efficiency, consistency, and adherence to the statutory requirements for institution,” but in the “Open Letter From America’s Innovation Agency,” also dated October 17, 2025, the Director states that the new process will serve the USPTO’s mission of “maintaining a patent system that is fair, predictable, and respected.”

The Open Letter criticizes the original panel-level institution decision-making process as one that “raised structural, perceptual, and procedural concerns inconsistent with the AIA’s design, clear language, and intent affecting, among other things, the public’s rightful expectation of impartiality.” The Open Letter specifically discusses “the following difficulties” with the original process:

Perception of Self-Incentivization: panel-level institution decision-making “invit[ed] concern that the Board may be ‘filling its own docket.’”
Bifurcated Procedures for Discretionary Considerations: The bifurcated process “was never intended to be permanent” and “appears to have inadvertently produced extraordinarily high institution rates (at one point exceeding 95 percent) for referred cases.”
Statutory Adherence and Administrative Clarity: “[Although the AIA permits delegation of institution decisions,] [r]eturning this function to the Director re-aligns … procedures with the clear language and intent of the statute and returns accountability for such decisions to the Director just as the framework of the AIA provides.”

The Open Letter states that the new process will:

Eliminate the appearance of self-interest by separating the power to institute from the body that conducts the trial
Remove a perceived referral-signal bias by centralizing the decision point
Enhance transparency and public trust through a single line of authority
Re-align the duties and responsibilities of the Director, as a Presidentially appointed and Senate-confirmed officer, to be accountable for this threshold determination and properly effectuate the clear language of the AIA and thus Congress’s intent

Attorneys at �鶹��ý have extensive experience counseling clients on PTAB trial proceedings, and have successfully represented both petitioners and patent owners. If you are interested in obtaining advice on how to navigate the new PTAB paradigms or discuss other options, please contact your �鶹��ý attorney or the author for more information.

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USPTO Issues Proposed Rulemaking On Discretionary Denials of IPR Proceedings

Courtenay Brinckerhoff — Thu, 16 Oct 2025 20:55:25 +0000

In the issued under Director Squires, the USPTO proposes to modify the rules of practice relating to discretionary denials to institute Inter Partes Review (IPR) proceedings. The proposed rules reflect the current administration’s concerns regarding serial and parallel challenges of the same patent and their threat to our innovation-centric economy. In addition to “promot[ing] consistency across IPR proceedings” and “limiting the circumstances in which a district court and the PTAB will consider the same or closely related issues,” the USPTO expects the proposed rules changes “will have a positive impact on the economy” by “increase[ing] the reliability of patent rights and the predictability of patent disputes” and “decreas[ing] overall expenditures of patent litigation and the transaction costs for patent licensing.”

The USPTO “invites comments from the public on whether this proposed rule strikes the appropriate balance between efficiency, fairness, and stability in the patent system.” The Federal Register Notice sets only a 30-day public comment period, so stakeholders need to act quickly to ensure their views are considered.

Highlights of the Proposed Changes

The USPTO’s highlights the following aspects of the USPTO’s proposed rulemaking, which would:

Require an IPR petitioner to file a stipulation not to pursue invalidity challenges under 35 U.S.C. §§ 102 or 103 in other forums
Provide that the USPTO will not institute an IPR when the USPTO or another forum already has adjudicated patentability or validity of the claims
Provide that the USPTO will not institute an IPR when another proceeding is likely to determine patentability or validity of the claims under §§ 102 or 103 first
Permit the USPTO to institute an IPR notwithstanding a prior adjudication or expected earlier determination on patentability or validity when exceptional circumstances exist.

According to the Federal Register Notice, the new rules would “focus [IPR] proceedings on patent claims that have not previously been challenged in litigation or where prior litigation was resolved at an early stage,” and are “intended to promote fairness, efficiency, and predictability in patent disputes.”

Promoting Reliable Patent Rights to Support Investment in Innovation

The “Background” section of the proposed rulemaking couches them as promoting “reliable patent rights” that are essential to the commercialization of innovation, and warns that serial challenges threaten to undermine our innovation-centric economy. According to the Notice, “Approximately 54% of all IPR petitions filed since the passage of the AIA are one of multiple petitions against the same patent” and “more than 80% of IPRs have co-pending district court litigation where the petitioner is also challenging patent validity.”

Reliable patent rights encourage the inventor or others to invest in the patented technology by giving them confidence that they, not competitors, will reap the benefits of their efforts. …. [M]ultiple challenges to the same patent through IPRs jeopardize the reliability of patent rights and incentives to invest in new technologies.

The “Background” section discusses the subjective nature of invalidity determinations and the concept that if you “roll the dice” enough times, even the strongest patents may be invalidated:

Even extremely strong patents become unreliable when subject to serial or parallel validity challenges. Determining whether a patent claim meets the statutory requirements of patentability is frequently a matter of judgment about which reasonable minds may disagree. …. Because reasonable minds may, and frequently do, disagree about whether a particular patent claim meets the statutory requirements, patents cannot serve their economic function if they are perpetually subject to de novo review.

Consider a hypothetical patent claim where 70% of experienced patent practitioners would conclude that the claim was properly granted, and 30% would oppose that conclusion. Such a patent claim seems reliable, because a substantial majority of practitioners believe it is patentable and was properly issued. However, if the patent is subjected to repeated de novo patentability review each time it is enforced, it will no longer be reliable. …. [A] patent with a 70% chance of surviving one de novo patentability review has less than a 50% chance of withstanding two or more de novo patentability challenges. ….

The “Background” section discusses the legislative history of the IPR statutes, and invokes Congressionally-delegated authority “to identify the circumstances when IPR proceedings would or would not benefit the patent system.” The “Background” section also discusses the high incidence of serial and parallel patent challenges, and asserts that parallel IPR and district court/ITC litigation can increase the costs and complexity of resolving patent disputes.

Preserve Resources for Ex Parte Appeals

According to the Notice, the proposed rule changes will permit the USPTO to devote more resources to hearing ex parte appeals of examiner rejections of pending patent applications. Prompt resolution of ex parte appeals—which may be needed to secure grant of a patent—is an important goal of the current administration, because “delayed resolution of ex parte appeals can prevent or delay business formation or capital raising which, in turn, delays releasing or launching patented technologies to market.” The USPTO notes that an ex parte PTAB appeal is the only option for challenging an examiner’s rejection, whereas “IPRs are not the only mechanism for challenging the validity of an issued patent.”

Details of the Proposed Changes

All of the proposed changes would be to 37 C.F.R. § 42.108, entitled “Institution of inter partes review,” and would add new paragraphs (d)-(f):

(d) Required stipulation for efficiency. Inter partes review shall not be instituted or maintained unless each petitioner files a stipulation with the Board and any other tribunal where it is litigating or later litigates regarding the challenged patent, stating that if a trial is instituted, the petitioner and any real party in interest or privy of the petitioner will not raise grounds of invalidity or unpatentability with respect to the challenged patent under 35 U.S.C. 102 or 103 in any other proceeding.

According to the Notice, the “[USPTO’s] view is that this requirement would promote fairness and efficiency by channeling similar patent challenges to a single forum and ensure that IPRs should generally serve as a complete substitute for at least some phase of the litigation.”

(e) Claims found valid in prior proceedings. Inter partes review shall not be instituted or maintained if a challenged claim or an independent claim from which a challenged claim depends:

(1) U.S. District Court Trial – Was found not invalid under 35 U.S.C. 102 or 103 by a district court or jury following a bench trial or jury trial in a decision or verdict that has not been vacated or reversed in relevant part;

(2) U.S. District Court Summary Judgment – Was found not invalid by a district court in a summary judgement decision finding no dispute of material fact under 35 U.S.C. 102 or 103 that has not been vacated or reversed in relevant part;

(3) U.S. International Trade Commission – Was found not invalid under 35 U.S.C. 102 or 103 in initial or final determination of the U.S. International Trade Commission that has not been vacated or reversed in relevant part;

(4) PTAB Final Written Decision – Was found not unpatentable in a final written decision of the Board under 35 U.S.C. 318(a) or 328(a) that has not been vacated or reversed;

(5) Ex Parte Reexamination – Was found patentable in an office action or decision by the Board following a reexamination request filed under Chapter 30 of Title 35 United States Code by someone other than the patent owner, the patent owner’s real party in interest or privy; or

(6) Federal Circuit – Was found unpatentable or invalid under 35 U.S.C. 102 or 103 in a decision, but that decision was reversed in relevant part by the U.S. Court of Appeals for the Federal Circuit.

The Notice clarifies that this rule “would extend to dependent claims where the independent claim on which each depends has already received scrutiny.”

(f) Parallel Litigation – Inter partes review shall not be instituted or maintained if, more likely than not, any of the following will occur, with respect to a challenged claim or an independent claim from which a challenged claim depends, before the due date for the final written decision pursuant to 35 U.S.C. 316(a)(11):

(1) U.S. District Court – A district court trial in which a party challenges the patent under 35 U.S.C. 102 or 103;

(2) U.S. International Trade Commission – an initial or final determination of the U.S. International Trade Commission with respect to 35 U.S.C. 102 or 103; or

(3) PTAB Final Written Decision – issuance of a final written decision by the Board under 35 U.S.C. 318(a) or 328(a).

The Notice does not provide additional comments on this proposed new paragraph.

(g) Institution in extraordinary circumstances. If a panel of the Board determines that extraordinary circumstances warrant institution notwithstanding paragraphs (d), (e), or (f) the Panel shall refer to matter to the Director who may personally institute inter partes review. Extraordinary circumstances may include a determination by the Director that the prior challenge barring institution was initiated in bad faith, e.g., for the purpose of preventing future challenges, or that the prior challenge is rendered irrelevant in view of a substantial change in a statute or precedent of the Supreme Court of the United States. Unusual and extraordinary circumstances shall not include new or additional prior art, new expert testimony, new caselaw (except as provided above) or new legal argument, or a prior challenger’s failure to appeal. Neither the Director nor the Board shall waive the requirements of paragraphs (d), (e), or (f) of this section except as provided in this paragraph. Frivolous or abusive petitions under this paragraph may be appropriately sanctioned, including with an award of attorneys’ fees.

According to the Notice, new paragraph (g) would “allow institution, notwithstanding paragraphs (d), (e), or (f), based on extraordinary circumstances,” but “[t]o ensure the predictability of institution decisions, this proposed section identifies specific examples of potential extraordinary circumstances and examples of circumstances that are not extraordinary.”

How Will Stakeholders Respond

It will be interesting to see how stakeholders respond to the proposed rulemaking. No doubt there will be comments supporting and criticizing them. The proposed rulemaking already is responsive to calls for the USPTO to use the rulemaking process, but stakeholders who view IPR proceedings as an important option are likely to argue that at least some of the proposed changes exceed the USPTO’s authority.

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USPTO Warns Against Blind Reliance on Artificial Intelligence

bklemm@foley.com — Thu, 15 Feb 2024 19:25:04 +0000

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal recently released a memorandum on the subject of the use of artificial intelligence (AI) by parties during proceedings before the Trademark Trial and Appeal Board (TTAB) and the Patent Trial and Appeal Board (PTAB).[1] In the memo, Director Vidal warns that parties are responsible for the content of their filings before the Boards, even when assisted by AI.

Concerns About AI Misuse

Director Vidal begins by recognizing that AI has already presented challenges for judges in other forums.[2] While Chief Justice John Roberts has observed that AI “has great potential to dramatically increase access to key information for lawyers and non-lawyers alike,” AI may also present false information as fact.[3] For example, in a widely reported incident, in the Southern District of New York a lawyer turned in a brief including citations to cases that were made up or “hallucinated” by a popular AI tool.[4] Last year, two attorneys were fined for their use of hallucinated cases in a brief.[5] Director Vidal expresses concerns that misuses of AI will add delays and incur unnecessary costs on parties before the TTAB and PTAB.[6]

Responsibility Lies on the Parties

Director Vidal notes that the USPTO has rules in place to prevent parties from engaging in misconduct. The USPTO Rules of Professional Conduct require that any signatory to a submission to either of the Boards certifies inter alia “that all statements made therein of the party’s own knowledge are true, that any legal contentions are warranted by existing law or by a nonfrivolous argument for the extension…or reversal of existing law, and that factual contentions have evidentiary support.”[7] The memo further notes that it is not enough to assume any AI tools used to create a submission to the PTO are providing correct information. All signatories to a filing thus have a duty to ensure that the filing meets the criteria stated in the rules. Practitioners are also reminded that sanctions are available under the rules, from “[s]triking the offending paper” up to “[t]erminating the proceedings in the Office.”[8] Knowing and willful violations could result in criminal liability.[9]

Takeaways

The recent memo from Director Vidal makes it clear that all parties and practitioners appearing before USPTO Boards have a duty to ensure that all information presented in their filings is factually accurate and that any arguments pursued are based on valid legal positions. Practitioners and parties should be aware of the limitations of AI tools and should not assume that the material generated by them is fit for submission in a legal proceeding. Before submitting a filing to a Board, parties and practitioners should take extra care to review any material generated with the assistance of AI tools to ensure that the AI-generated material is indeed accurate. Of particular concern should be citations to legal cases, which should be thoroughly checked to ensure that the cases really exist and stand for the stated legal principle — of course, this remains good practice even when AI-generative tools are not used for a given filing.

The USPTO recognizes that the use of AI tools to generate material in the legal industry is becoming increasingly common.[10] While AI tools have the potential to be incredibly helpful, these tools must be used judiciously and with an understanding that the ultimate responsibility for a filing lies with the people appearing before the Boards.

[1] “The Applicability of Existing Regulations as to Party and Practitioner Misconduct

Related to the Use of Artificial Intelligence” (February 6, 2024).

[2] Id. at 1.

[3] Id. at 1 (quoting 2023 Year-End Report on the Federal Judiciary at 5-6, www.sup remecourt.gov/publicinfo/

year-end/2023year-endreport.pdf (Dec. 31, 2023).

[4] Pranshu Verma, “Michael Cohen Used Fake Cases Created by AI in Bid to End His Probation,”

Washington Post, www.washingtonpost.com/technology/2023/12/29/michael-cohen-ai-googlebard-

fake-citations (Dec. 29, 2023).

[5] Dan Milmo et al., “Two US lawyers fined for submitting fake court citations from ChatGPT,” The Guardian, (Jun. 23, 2023).

[6] “The Applicability of Existing Regulations as to Party and Practitioner Misconduct

Related to the Use of Artificial Intelligence” (February 6, 2024) at 2.

[7] Id. at 3 (quoting 37 C.F.R. §§ 11.18(b)(1), 11.18(b)(2), 11.18(b)(2)(ii), 11.18(b)(2)(iii) (internal quotes removed).

[8] Id. at 4 (citing 37 C.F.R. §§2.119(e), 2.193, 42.6(a)(4), 42.l1, 42.12; Trademark Trial and Appeal

Board Manual of Procedure §527.03).

[9] Id. (referring to 37 C.F.R. § l1.l8(b)(1), (c)).

[10] Indeed, an initial draft of this blog post was based on a summary of the memo provided by an AI tool. All references were thoroughly reviewed for accuracy.

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Sotera Stipulation Filed After the Patent Owner’s Response Still Deemed Effective

bklemm@foley.com — Tue, 30 Jan 2024 16:55:47 +0000

The Patent Trial and Appeal Board (PTAB) recently addressed both the timing requirements and procedures for filing a Sotera stipulation before the Board in, BMW of North America LLC v. Northstar Systems LLC, IPR2023-01017 (P.T.A.B. June 9, 2023). In granting institution, the Board held that a petitioner’s Sotera stipulation should not be disregarded “because of its timing.” See id., Paper 12, at 10. In support of its conclusion, the Board noted that “Patent Owner has not brought to our attention any binding precedent that establishes a time limit by which a Sotera stipulation must be submitted before we enter our decision on institution, and we are not aware of any such precedent,” and that the patent owner had not identified any prejudice by the timing of the stipulation. Id.

Factual Background: BMW of North America LLC v. Northstar Systems LLC

BMW and Northstar were parties to multiple district court proceedings involving the contested patent. E.g., NorthStar Sys. LLC v. Bayerische Motoren Werke AG, No. 2:22-cv-00496-JRG (E.D. Tex.); BMW of N. Am., LLC v. NorthStar Sys. LLC, No. 6:23-cv-00456-ADA (W.D. Tex.). BMW’s initial inter partes review (IPR) filing did not include a stipulation asserting that the petitioner would forego any invalidity challenges in the parallel district court proceedings. In the Patent Owner’s Preliminary Response (POPR), Northstar argued that the petition should be discretionarily denied under 35 U.S.C. § 314(a) in view of the Fintiv factors. IPR2023-01017, Paper 7, at 20.

After the filing of the POPR, BMW emailed the Board requesting authorization to file a preliminary reply to the POPR to address the patent owner’s §314(a) “Fintiv” arguments, specifically noting that “the factual circumstances before the district court have changed since the Petition’s filing date.” The Board granted the request, following which BMW submitted its preliminary reply, accompanied by a Sotera stipulation asserting that if IPR is instituted, it would not pursue in the related district court proceedings “any ground that [petitioner] raised or reasonably could have raised” in the IPR. IPR2023-01017, Paper 8, at 1

In its subsequent preliminary sur-reply, Northstar asserted that the “belated” Sotera stipulation should not be given effect because it had “come at the eleventh hour.” Id., Paper 11, at 3.

The Board’s Institution Decision

In instituting the IPR and declining to exercise its discretion under § 314(a), the Board noted the policy set forth in the USPTO Director’s June 21, 2022, memorandum establishing that when a petitioner submits a Sotera stipulation, the Board will not discretionarily deny institution under §314(a). Id., Paper 12, at 9-10. In other words, under the mandatory Fintiv guidance promulgated by Director Vidal, a Sotera stipulation is dispositive as to discretionary denials.

Moreover, the Board did not find persuasive the patent owner’s argument that the petitioner “should not be credited with this stipulation as it has come at the eleventh hour.” The Board noted that:

Patent Owner has not brought to our attention any binding precedent that establishes a time limit by which a Sotera stipulation must be submitted before we enter our decision on institution, and we are not aware of any such precedent.

Id. at 10. The Board further remarked that the patent owner did not allege that it had been prejudiced by the timing of the stipulation. Id.

In a footnote, the Board commented further on the timing requirements of a Sotera stipulation, stating:

As a practical matter, of course, a petitioner would need to submit a Sotera stipulation well in advance of the Board’s deadline for entering its institution decision, in order to ensure that the Board has the opportunity to consider it.

Id. at 10 n.11.

Important Considerations in the Timing of Sotera Stipulations

This decision does not establish any bright-line rule regarding the timing and manner of submitting stipulations, whether a Sotera-type stipulation or otherwise. At least the panel in this decision did not believe that any such stipulation was required to be filed with the petition to be given effect, as long as the stipulation is filed “well in advance” of the Board’s deadline for entering its institution decision and does not prejudice the opposing party.

Here, BMW filed its preliminary reply nearly two-and-a-half months before the institution decision. However, it may not always be certain what constitutes “well in advance” of the institution decision deadline, especially since institution decisions can be issued any time after the parties’ preliminary filings are complete. At least in this case, the Board accepted a Sotera stipulation provided by way of a Board-approved petitioner preliminary reply to the POPR.

One potentially important consideration to keep in mind is whether the Board will allow additional evidence to be submitted into the record after the petition and POPR are filed, especially since no rule allows for any such additional filings as a matter of right. While BMW was afforded the opportunity to file a preliminary reply in this instance without any prohibition on accompanying it with evidence/exhibits, such authorization is within the discretion of the Board and the petitioner’s requests can be denied in the absence of a showing of “good cause.” See, 37 C.F.R. § 42.108(c). (“A petitioner may seek leave to file a reply to the preliminary response in accordance with §§ 42.23 and 42.24(c). Any such request must make a showing of good cause.”) Thus, if a petitioner does not file a stipulation with the petition, there is no guarantee that it will be allowed to file belatedly, as BMW was allowed to do in this case. It is possible that a petitioner’s indication that it seeks to file a stipulation would effectively lead to authorization to do so, but there is no dispositive rule to this effect as of yet.

Finally, while the decision in this case relied on the apparent lack of prejudicial impact on the patent owner in accepting the belated stipulation, this may not always be the case. It might be possible for a patent owner to identify some form of prejudice from a late-filed stipulation, which could weigh against acceptance of a stipulation filed later in the proceeding.

In addition, it is unclear if the outcome would have been the same had the stipulation been something less than the Sotera-type stipulation at issue here. For example, a Sands Revolution-type stipulation is not dispositive as to the Board’s § 314(a) discretionary denial analysis (see, e.g., Samsung Electronics Co. Ltd. et al. v. Staton Techiya, LLC, IPR2022-00302, Paper 13, at 16-17 (P.T.A.B. July 11, 2022) (“The breadth of such a stipulation affects the weight it is given in the discretionary denial analysis.”), and this fact could less heavily favor accepting such a stipulation if it is only submitted later in the proceeding and not with the petition.

While BMW was able to file its stipulation in this case and have it given its intended effect in the Fintiv analysis, the decision stops short of promising the same result in all circumstances. Given that petitioner preliminary replies are not allowed as a matter of right — and even when allowed, the filing of new evidence or exhibits may be precluded — petitioners should take caution in the timing of filing any stipulation in the proceeding. To be safe, petitioners should always consider filing stipulations at the earliest opportunity — i.e., with the initial petition. On the other hand, patent owners must appreciate that such filings may be allowed even after the POPR, and remain cognizant of any prejudicial effects resulting from any such belated filing.

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USPTO Says Prior Art Date of AIA Patents is Not Limited By Dynamic Drinkware

ppicciotta@foley.com — Wed, 20 Dec 2023 15:58:33 +0000

When Dynamic Drinkware was decided in 2015, commentators debated whether differences in the language of the American Invents Act (AIA) version of 35 USC § 102 would shield AIA patents from its restrictions. Now, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal has taken the position that AIA patents are not governed by Dynamic Drinkware, and so qualify as prior art as of the earliest priority date claimed, without regard to whether the cited patent document is entitled to the priority claim.

Penumbra, Inc. v. RapidPulse, Inc.

The Patent Trial and Appeal Board (PTAB) recently addressed this issue in the context of an inter partes review (IPR) proceeding, Penumbra, Inc. v. RapidPulse, Inc. (IPR2021-01466). Director Kathi Vidal designated the PTAB’s as precedential, making it the official USPTO position.

A major issue in the IPR proceeding was the prior art date of an asserted patent (“Teigen”). Teigen was filed on August 7, 2020, but claimed priority through a PCT application to two provisional applications, filed on December 12, 2018, and July 24, 2018, respectively. Teigen only would qualify as prior art as of the filing dates of the provisional applications.

RapidPulse argued that, under Dynamic Drinkware, Teigen only could qualify as prior art if it was entitled to its priority claims. That is, Penumbra only could rely on Teigen as a prior art document if it could show that at least one claim of the patent is supported by the provisional application(s). Penumbra countered by asserting that Dynamic Drinkware does not apply to AIA patents, and so Penumbra met its burden by demonstrating that the disclosure relied upon in its obviousness argument was adequately supported by the provisional applications.

**The Dynamic Drinkware/Wertheim Requirements**

In Dynamic Drinkware, the Federal Circuit held that a petitioner relying on a pre-AIA patent document as of its priority date must show that at least one claim of the asserted document is supported by the priority application, in addition to showing priority application support for the disclosure relied upon. The requirement that at least one claim be supported traces back to the 1981 decision in In re Wertheim, 646 F.2d 527 (CCPA 1981), which concerned an obviousness rejection of a patent application. Similar to the Teigen reference at issue in Penumbra, the cited patent in Wertheim (“Pfluger”) was filed after the patent application at issue but claimed priority (as a continuation-in-part) to a previously filed parent application.

The USPTO had cited Pfluger under pre-AIA § 102(e), which provides:

A person shall be entitled to a patent unless —

(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent …

The CCPA noted that § 102(e) codified the 1926 Supreme Court decision in Alexander Milburn Co. v. Davis-Bournonville Co., which essentially held that a patent qualifies as prior art as of its filing date because, but for “the delays of the Patent Office” the patent would have been published on its filing date. Against that backdrop, the CCPA determined that § 102(e)’s references to “the invention” and “an application for patent” “necessarily invokes § 120 rights of priority for prior co-pending applications.” The court stated:

If, for example, the PTO wishes to utilize against an applicant a part of that patent disclosure found in an application filed earlier than the date of the application which became the patent, it must demonstrate that the earlier-filed application contains §§ 120/112 support for the invention claimed in the reference patent. For if a patent could not theoretically have issued the date the application was filed, it is not entitled to be used against another as ‘secret prior art,’…. We emphasize that the above noted statutes, §§ 102(e), 120, and 112, speak with reference to some specific claimed subject matter by use of the terms emphasized. It is axiomatic in patent law that questions of description, disclosure, enablement, anticipation, and obviousness can only be discussed with reference to a specific claim which identifies ‘the invention’ referred to in the statutes.

Thus, the court interpreted pre-AIA § 102(e) as requiring at least one claim of the cited patent to be supported by the earlier-filed application in order to qualify as prior art as of the earlier filing date.

AIA Patents Are Different

The AIA replaced pre-AIA § 102(e) with § 102(a)(2) and § 102(d), as well as enacting new § 100(i)(1)(B). The PTAB considered these statutes in Penumbra and found that the different statutory language eliminated the Wertheim/Dynamic Drinkware requirement to evaluate whether any claim in an asserted patent is actually entitled to its priority claim. In particular, the PTAB noted that § 100(i)(1)(B) and § 102(d) draw distinctions between being entitled to a right of priority (for patentability purposes) and being entitled to claim a right of priority (for prior art purposes).

§ 102(d) governs the prior art date of AIA patent documents, and reads in pertinent part (with emphasis added):

For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application –… (2) if the patent or application for patent is entitled to claim a right of priority… based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

As the PTAB noted, the section of the MPEP explaining § 102(d) (MPEP § 2154.01(b)) states that “the question of whether a patent or published application is actually entitled to priority or benefit with respect to any of its claims is not at issue in determining the date the patent or published application was ‘effectively filed’ for prior art purposes” (emphasis added). The PTAB noted other similar USPTO guidance, including a 2018 memorandum to the Patent Examining Corps, and other nonprecedential PTAB decisions, including Apple Inc. v. Telefonktiebolaget LM Ericsson, No. IPR2022-00341. It distinguished Forescout Technologies, Inc. v. Fortinet, Inc,, No. IPR2021-01328, because in that case the petitioner had failed to show support for the subject matter in the priority application.

As noted above, . Thus, it will be binding on the USPTO Examining Corps and PTAB, unless and until it is overturned by the Federal Circuit. Under the decision, an AIA patent document can be cited as prior art as of the filing date of its priority application without having to show that at least one claim is supported by the priority application. There is still a requirement to show that the priority application describes the subject matter at issue, and the PTAB noted that the cited AIA patent document must “meet the ‘ministerial requirements of §§ 119 and 120” for the relevant priority claim. While the PTAB found the latter to be satisfied (or not challenged) in Penumbra, it will be interesting to see if this decision leads to more litigation around those “ministerial” requirements, and how much deference will be given to the USPTO’s acknowledgment of a priority claim during prosecution of the cited patent.

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USPTO Director Uses New Review Process to Order Independent Rehearing of PTAB Institution Decision

bklemm@foley.com — Wed, 15 Nov 2023 22:01:43 +0000

Last week marked the first time that USPTO Director Vidal acted under the Revised Interim Director Review Process to order a Delegated Rehearing Panel to review a decision denying institution of inter partes review (IPR). In July, the USPTO established a Delegated Rehearing Panel process by which the Director may delegate for further consideration Director Review requests of Institution Decisions and Final Written Decisions. Last week, she did just that in DK Crown Holdings Inc. v. Diogenes Limited, IPR2023-00268, Paper 11 at 2 (PTAB Aug. 8, 2023).

The Board issued its initial decision denying institution of IPR in August. Id., . In September, DK attorneys requested Director Review. Id., . They argued that the majority decision was an abuse of discretion because the Board (1) improperly imported claim limitations to avoid prior art; (2) construed claim language more narrowly than a dependent claim; and (3) characterized the prior art inaccurately or contrary to its disclosure. Id.

After reviewing the record, Director Vidal determined that “the Decision warrants review by an independent Delegated Review Panel (“DRP”) to review the fact-intensive issues presented in this case.” Id., Paper 11 at 2. She delegated Director Review of the decision to a DRP to “review the case and to determine whether to grant rehearing” by determining “whether the record demonstrates that the Decision misapprehended or overlooked any issue raised in the Director Review request.” Id. The Director also indicated that she will not participate in the further analysis, with the DRP independently authorized to issue a decision or remand to the Board for further proceedings. Once the DRP issues its decision or remands, neither party may request further Director Review of the decision or the Board on remand. See . However, the Director maintains authority to review any DRP decision on sua sponte Director Review. Id.

The Director’s order also instructs the Board to issue an order specifying the members of the DRP for this review. The PTO’s guidance indicates that:

The DRP shall be selected from the Chief Judge, Deputy Chief Judge, Vice Chief Judges, and Senior Lead Judges, excluding judges who served on the original Board panel for the case under review or otherwise have a conflict with the case.

See The guidance further states that the paneling of members onto the DRP will follow .

While the ultimate outcome of this Institution Decision challenge remains uncertain, the Director has now shown a willingness to exercise the authority granted by the new interim Director Review and Delegated Rehearing Panel processes.

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Nothing for Free: Federal Circuit Clarifies Commercial Success is All About Sales

christina.reilly@829llc.com — Wed, 23 Aug 2023 05:00:00 +0000

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USPTO Provides Updated Guidance on the Use of Applicant Admitted Prior Art

christina.reilly@829llc.com — Mon, 17 Jul 2023 05:00:00 +0000

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