A Case for the Supreme Court on the USPTO’s IPR Guidelines

Apple Inc. v. Vidal (Supreme Court. 2023)

Under former director Iancu, the USPTO created a set of guidelines allowing the PTAB to deny IPR institution even in situations where the challenger raises strong challenges.  These discretionary denials are known as Fintiv guidelines based upon the precedential case of Apple Inc. v. Fintiv, Inc., IPR2020-00019 (P.T.A.B. 2020).  The statute appears to provide the USPTO Director with discretion in at least two key ways: (1) The statute does not expressly require institution but rather sets the reasonable-likelihood of success as a minimum threshold for granting institution. (2) The statute also indicates that the decision of whether to issue is non-appealable, suggesting a discretionary approach.

A group of five large companies led by Apple then sued the USPTO in the N.D. Cal. — arguing that the discretionary denials were in violation of the Administrative Procedure Act (APA).  These five companies all regularly face patent infringement allegations and want a smoother path to invalidating the claims via IPR and PGR.

The district court dismissed the APA case and that was largely affirmed on appeal (although the Federal Circuit did ding the USPTO for failing to follow notice-and-comment procedure).  See, Jordan Duenckel, IPRs and the APA: Review of Director’s Discretion to Initiate IPRs, Patently-O (March 15, 2023).

In a recent filing, the plaintiffs have indicated that they are planning to petition the Supreme Court to hear the case.  The new filing is a request for extension of time until August to file the petition for writ of certiorari.

In the background, Dir Vidal has moved forward with her Advance Notice of Proposed Rulemaking (ANPRM) for potential PTAB reforms that place some limits on discretionary denials, but not to the extent Apple would like. The forthcoming brief is likely argue that the Federal Circuit’s ruling has led to the PTO signaling interest in adopting rules that would contradict the America Invents Act (AIA) and that fail to adequately address concerns.

Meanwhile, comments on the ANPRM are due June 20, 2023.