In Law360 Article, Paul Stewart Discusses Challenges To USPTO Rulemaking

In the latest installment of Knobbe Martens’ Law360 series on noteworthy Federal Circuit opinions, partner Paul Stewart writes about a recent decision in Apple Inc. v. Vidal, a case relating to a “long-running dispute over the U.S. Patent and Trademark Office's discretion to deny institution of an inter partes review in deference to parallel district court litigation.”

In the decision, the Federal Circuit held that the courts have no authority to address the substance of rulings that delineate the factors the USPTO will weigh in deciding whether to deny review. However, the Federal Circuit gave a green light to proceed with a challenge to the procedures used by the USPTO to issue its rulings.

Stewart writes, “The Federal Circuit recognized that the plaintiffs' challenges were not to a specific denial of a particular inter partes review, but to the issuance of general standards applicable to all inter partes reviews.” Thus, the Federal Circuit permitted the plaintiffs to challenge whether it was appropriate for the USPTO to issue general standards governing discretionary denials through processes other than formal rulemaking.

Stewart concludes by saying that “the USPTO director is free to issue formal rules governing discretionary denials of inter partes reviews in light of simultaneous pending district court litigation, and, while the public will be able to comment, those formal rules will not be subject to judicial review.”

Read the full article here.