PTAB/USPTO Update - January 2024

By WilmerHale

Jan 9, 2024

USPTO Leadership

On January 4, the USPTOannouncedthe appointment of new leaders for the agency’s policy and communications teams.Sharon Israelwill serve as the Chief Policy Officer and Director for International Affairs, andJack Flemingwill serve as Chief Communications Officer.
On December 6, the USPTOannouncednew members of the Public Advisory Committee. Lateef Mtima, Earl “Eb” Bright, and Marvin Slepian are joining thePatent Public Advisory Committee(PPAC), and Valerie Calloway, Nehal Madhani, and Douglas Masters are joining theTrademark Public Advisory Committee(TPAC).

USPTO News

The USPTOannouncedthat it will open two new outreach office locations, one in the Atlanta, Georgia metropolitan area serving innovators in the Southeast region, and one in Strafford County, New Hampshire, serving innovators in the New England region.
The USPTO established a newpre-application assessment programto support underresourced inventors. Under the program, USPTO examiners will help first-time prospective patent applicants assess if their invention is novel in the art by providing search assistance using public patent tools.
Beginning on January 30, 2024, the USPTO will start issuingcertificates of correctionfor patents electronically.

Notices, Guidance, and Requests

Request for Information Regarding the Draft Interagency Guidance Framework for Considering the Exercise of March-In Rights, 88 Fed. Reg. 85593 (Dec. 8, 2023) [Comments due by February 6, 2024] [The National Institute of Standards and Technology (NIST) is seeking comments on the Draft Interagency Guidance Framework for Considering the Exercise of March-In Rights, which reviews the factors that an agency may consider when deciding whether to exercise march-in rights under the Bayh-Dole Act. The USPTO issued apress releaseencouraging stakeholders to submit comments.]
Notice and Request for Comments on the Implications of Access and Benefit Sharing (ABS) Commitments/Regimes and Other Proposed Commitments Being Considered Under a WHO Convention, Agreement or Other International Instrument on Pandemic Prevention, Preparedness and Response, 88 Fed. Reg. 88637 (Dec. 22, 2023)[Comments due by Jan. 22, 2024] [The Department of Health and Human Services (HHS) issued a Request for Comment seeking information on concepts currently under consideration by parties negotiating a World Health Organization (WHO) Pandemic Preparedness Agreement. The USPTO issued apress releaseencouraging stakeholders to submit comments.]

Final Rules

There are no new final rules.

Interim Rules

There are no new interim rules.

Proposed Rules

There are no new proposed rules.

PTAB Decisions

New Precedential PTAB Decisions
- There are no new precedential PTAB decisions.
New Informative PTAB Decisions
- There are no new informative PTAB decisions.
New Director Review Decisions
- Nokia of America Corporation v. Alexander Soto and Walter Soto, IPR2023-00680, IPR2023-00681 & IPR2023-00682
  - Decision subject to Director Review –Paper 10(November 3, 2023) [Institution Decision exercising discretion to deny institution under 35 U.S.C. § 325(d). Petitioner requested Director review on the basis that (a) “Petitioner’s combinations cannot be cumulative solely because the cover the same limitations as prior art combinations,” (b) “the Board’s conclusion that [two of the cited references] are cumulative of art before the Examiner is erroneous and based on clear factual error” (c) “the Board’s conclusion that [a third cited reference] is cumulative of art before the Examiner is erroneous because it ignores material differences,” and (d) “to the extent the Board relied on the prior IPR to deny institution, this is legal error” (see Paper 11)]
  - Order granting Director Review –Paper 12(January 4, 2024) [finding that Director review “is appropriate” and stating that an order will be issued “in due course”]
- Nearmap US, Inc. v. Eagle View Technologies, Inc., IPR2022-00734
  - Decision subject to Director Review –Paper 41(public version of confidential Paper 39) (December 4, 2023) [Final Written Decision determining no challenged claims unpatentable. Petitioner requested director review on the basis that “[t]he Final Written Decision reflects a pattern of failure to consider and address disputed claim constructions, despite finding nonobviousness based on the relative weight of secondary considerations—a finding that necessarily implicates unresolved disputes over claim constructions” and that “the Board applied the wrong legal standard to determine the challenged claims are coextensive with Patent Owner’s commercial products, incorrectly placed the burden on Petitioner to show the challenged claims are not coextensive, and reached its conclusion of nonobviousness based solely on secondary considerations without weighing the prior art obviousness showing” (see Paper 40)]
  - Order granting Director Review –Paper 42(December 21, 2023) [finding that Director review “is appropriate” and stating that an order will be issued “in due course”]
- American Honda Motor Co., Inc. v. Neo Wireless LLC, IPR2023-00797
  - Decision subject to Director Review –Paper 14(November 9, 2023) [Institution Decision exercising discretion to deny institution under 35 U.S.C. § 314(a). Petitioner requested Director review on the basis that “[t]his case presents a question of first impression—whether a defendant’s participation in the efficiency-promoting litigation procedures such as a joint defense group (‘JDG’) or multidistrict litigation (‘MDL’) may properly serve as the principal – if not sole – reason for discretionary denial underGeneral Plastic” (see Paper 16)]
  - Order granting Director Review –Paper 18(December 21, 2023) [finding that Director review “is appropriate” and stating that an order will be issued “in due course”]
- General Motors LLC and Nissan North America, Inc. v. Neo Wireless LLC, IPR2023-00962
  - Decision subject to Director Review –Paper 11(December 6, 2023) [Institution Decision exercising discretion to deny institution under 35 U.S.C. § 314(a).]
  - Order granting Director Review –Paper 12(December 21, 2023) [determining that “sua sponteDirector review of the Board’s Decision is appropriate” and stating that an order will be issued “in due course”]
- Ford Motor Company v. Neo Wireless LLC, IPR2023-00763
  - Decision subject to Director Review – Paper 17 (November 9, 2023) [Institution Decision exercising discretion to deny institution under 35 U.S.C. § 314(a). Petitioner requested Director review on the basis that “[t]he Panel improperly extended Factor 1 of General Plastic to find direct competitors who sell different products to have a 'significant relationship' by virtue of their involuntary inclusion—over their objection and at the Patent Owner’s request—in a consolidated multidistrict litigation” (see Paper 18)]
  - Order granting Director Review – Paper 19 (December 21, 2023) [finding that Director review “is appropriate” and stating that an order will be issued “in due course”]