Photo by Lala Azizli on Unsplash [Download]

Guest Post: Silicon Valleys APA Challenge to PTAB Discretion

Professor Vishnubhakat was formerly an advisor at the USPTO, but his arguments here should not be imputed to the USPTO or to any other organization.

This week, four iconic Silicon Valley technology companiesApple, Cisco, Google, and Intelsued the USPTO under the Administrative Procedure Act. The lawsuit challenges the USPTOs so-called NHK-Fintiv rule, named after a pair of inter partes review decisions in the PTAB that the agency previously designated as precedential.

Yet what is especially striking about the lawsuit, and worth considering more deeply, is a particular pair of arguments at the heart of the challenge.

One is that the NHK-Fintiv rule is contrary to the policy and text of the AIA and therefore exceeds the Directors authority.
The other is that the NHK-Fintiv rule is procedurally infirm because it was not promulgated through APA notice-and-comment rulemaking.

The disputed USPTO policy allows the PTAB to deny institution of an inter partes review petition based on how far a parallel U.S.

There, a panel of the PTAB declined to institute NHK Springs petition against an Intri-Plex patent where a parallel infringement suit was already pending between the same parties in the Northern District of California.

First came 325, which empowers the Director to determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding.

This is pretty much the definition of action that is in excess of statutory jurisdiction, authority, or limitations, or short of statutory right.

Original article