PTAB Petitions Dip as Vidal Wields Director Review Power to Address Uncertainty
June 5, 2024
The Patent Trial and Appeal Board (PTAB) saw 328 petitions for America Invents Act (AIA) review in the first quarter of 2024, including 322 petitions for inter partes review (IPR) and six petitions for post-grant review (PGR). Filings were down by 5% compared to Q1 2023, which saw 345 petitions filed; but were up by 18% compared to Q4, during which 278 petitions were filed.
This slight first-quarter filings dip came as USPTO Director Kathi Vidal continued to use her post-Arthrex director review authority to resolve uncertainty over some of the most heavily debated aspects of the AIA review system. Most significantly, as Q1 approached its end, the Director reversed a set of controversial decisions that some viewed as improperly expanding the rules allowing the Board to discretionarily deny multiple petitions against the same patent (“parallel” and “serial” petitions).
Last December, automakers Ford and Honda sought director review of decisions in which the PTAB discretionarily denied institution of IPRs they filed against Neo Wireless LLC (f/k/a CFIP NCF LLC), holding that those petitioners had a “significant relationship” under General Plastic and Valve I/II with another automaker, Volkswagen, that had previously filed an IPR against the same patent, because they were all codefendants in the same court-imposed multidistrict litigation. In February, Ford and Honda both argued that the rulings would allow patent owners to sue an “entire industry” and unfairly hold all defendants to the results of a “single IPR”. Earlier that month, former Senator Patrick Leahy (D-VT), the AIA’s cosponsor, published an editorial in support of their position, arguing that the panel’s finding of a “significant relationship” here showed “flawed logic that cuts against widely understood concepts of justice”. On March 22, Vidal agreed, reversing the denials of institution and ruling that “the Board does not recognize a ‘significant relationship’ between parties having different accused products that merely engage in court-ordered pretrial coordination”.
That change comes amid a broader conversation about PTAB reform in the first quarter—one that included a USPTO rulemaking proposal that could also potentially impact parallel and serial petitions, among other issues. For more on that proposal and other key developments related to the PTAB, see RPX’s first-quarter review.