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Director Vidal's Impact On the PTAB: Big Changes and More On the Way
After over a year and a half at the helm of the U.S. Patent and Trademark Office (USPTO), Director Kathi Vidal has made significant and lasting impacts on the Patent Trial and Appeal Board (PTAB) through a variety of different actions, including Director Reviews, issuing guidance, designating additional cases as precedential, issuing sanctions sua sponte, and returning institution rates to 2016 levels. All signs point to continuation of additional changes under her continued leadership, based on various proposed rulemaking announcements and the USPTO's current Strategic Plan.
Perhaps the largest impact that Director Vidal has had upon the PTAB is has been via Director Reviews. The U.S. Supreme Court's decision in United States v. Arthrex, Inc., 141 S.Ct. 1970 (2021), mandated Director Reviews to correct what the case deemed procedural defects in the way that administrative patent judges are appointed to the PTAB. Although the interim Director Review procedure was put in place before Director Vidal was in office, prior to her tenure only five out of the 189 requests filed were granted, according to PTAB-published statistics. According to those same statistics, under Director Vidal a total of 41 Director Reviews have been issued as of this writing, with most being issued sua sponte by the Director and just a handful of them resulting from parties' requests for Director Review. Thus, Director Vidal has taken seriously the mandate of the Arthrex case and has been a very active in clarifying PTAB procedures and precedent via sua sponte Director Reviews.
Among the cases addressed in Director Reviews in the past year, a multitude of topics was addressed. CommScope Tech, LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (Final Written Decision) (PTAB Feb. 27, 2023) addressed clarifying the standard for instituting an IPR in view of the factors set out in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Final Written Decision) (PTAB March 20, 2020) (designated precedential May 5, 2020); Director Vidal explained that even where compelling evidence is presented, the Fintiv analysis must be undertaken. Nested Bean, Inc. v. Bing Beings US Pty. Ltd., IPR2020-01234, Paper 24 (Final Written Decision) (PTAB Jan. 24, 2022), Paper 42 (Director Review Feb. 24, 2023), clarified the proper treatment of multiple dependent claims as each claim needing to be considered separately. Apple Inc. v. Zipit Wireless, Inc., IPR2021-01131, Paper 30 (Final Written Decision) (PTAB Dec. 20, 2022) (Director Review Jan. 4, 2023) providing clarity on the standard for abandonment of contest by a party in an IPR as requiring an affirmative statement to abandon it. In 2022, in UAB v. Bright Data Ltd., IPR2021-014921, Paper 54 (Final Written Decision) (PTAB Sept. 27, 2023), Director Vidal had weighed in on discretionary denial under the factors in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (Final Written Decision) (PTAB Sept. 6, 2017) (Precedential Oct. 18, 2017) addressing serial petitions, specifically allowing petitioners to pursue a second petition where the first-filed petition was not evaluated on the merits. Each of these cases had a meaningful and likely long term impact on PTAB practice.
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