The decision of the Appeal Court of 13 March 2023 rekindled the challenge of Apple, Google, Cisco, Intel and Edwards Lifesciences to the U.S. patent-review procedure.
The USPTO’s instruction challenged
Historically, the Director of the U.S. Patent and Trademark Office (PTO) instructed the Board under delegation by the Director, the Director’s discretion whether to institute requested inter partes reviews (IPRs – review between the parties). The plaintiffs considered that these instructions appeared to repeatedly deny many institution requests. According to the Court, these instructions may have been improperly issued as they must have been but were not produced through notice-and-comment rulemaking under 5 U.S.C. § 553.
The Court’s conclusion
The Court stated that Apple’s standing to claim that the USPTO’s instruction is feasible. It reversed the dismissal of the District Court of the Northern District of California for non-reviewability of the plaintiffs’ challenge to the Director’s instruction, improperly issued without notice and comment rulemaking. Meanwhile, it affirmed the previous judgement dismissing challenges of Apple and other plaintiffs to the instruction of the PTO’s Director as substantively contrary to statute and as arbitrary and capricious.
Decision full text: https://fingfx.thomsonreuters.com/gfx/legaldocs/lbpgglqgxpq/APPLE%20LAWSUIT%20USPTO%20opinion.pdf
For more news about IP on AstraIA Gear: https://www.astraiagear.com/2023/02/28/eu-sunrise-period-of-the-unified-patent-court/