Post-Grant USPTO Procedures

While the USPTO, in Dec. 2021, updated director review guidance to clarify that it would not accept requests for director review of institution decisions, but that was further clarified in May, where the agency explained that, while parties may only request director review for final written decisions and not institution decisions, the director “has always retained and continues to retain the authority to review such decisions sua sponte.” The Federal Circuit distinguished Arthrex because here, “there is no structural impediment barring the USPTO director from reviewing institution decisions. [ . . . ] Since the institution statute unambiguously identifies the director as the politically accountable executive officer responsible for institution decisions, . . . the court found that there was no Appointments Clause Issue.

• News article (paywall)

In Cxloyalty, Inc. v. Maritz Holdings, the Federal Circuit reversed the PTAB's finding that claims amended by IPR were not directed to a business method. The Board held that the original claims were ineligible business method claims, but that the replacement claims were eligible because the replacement claims “contained an inventive concept.”

This case touches on the question of when novelty is important in determining eligibility, but is not able to articulate why, in this case, novelty is insufficient even if it “is necessarily not well-understood, routine, or conventional.”

Stated the court:

“Although [Martz's] expert testimony invokes the words, 'well-understood, routine, or conventional,' the type of unconventionality described by Maritz's expert does not spare the claims. To be sure, a patent claim may be eligible under § 101 if it, for example, 'reflects something more than the application of an abstract idea using well-understood, routine, and conventional activities.' But the expert testimony relied upon by Martiz does not establish that. At most, the testimony describes the claimed subject matter as not conventional only in the sense that the subject matter as a whole was novel. Indeed, novel subject matter is necessarily not well-understood, routine, or conventional. But as explained previously, our cases are clear that a patent claim is not eligible under § 101 merely because it receives novel subject matter.” (Citations removed.)

• News story (paywall)

In Unwired Planet v. Google, the Federal Circuit rebuked the USPTO's broad interpretation of “covered business method,” stating:

In oral arguments, Unwired Planet argued that the U.S. Patent 7,024,205 is not directed to covered business method and PTAB had no business instituting the CBM. From questioning, the judges appear inclined to avoid the question of CBM review by finding invalidity by reasons of obviousness in an IPR on the same patent proceeding in parallel with the CBM review. Judges grill Google's representative on whether this patent relates to a financial service starting at 30:28.

• Stream: (mp3)

Taylor v. USPTO ¹⁾ arises out of a dispute between a pro se patentee, who attempted to make 7.5- and 11.5-year maintenance payments, but was $10 deficient in his 7.5 year payment. The Fed. Cir. stated that “the PTO’s action in taking Mr. Taylor’s payment without notifying him of its deficiency is not reasonable.” The Fed. Cir. concluded, ”[I]n this case, equity would counsel that the PTO should reinstate Mr. Taylor’s patent upon receipt of his payment for all outstanding maintenance fees. This relief will remedy, to this court’s best estimation, the PTO’s arbitrary and capricious actions.“

• Summary, commentary