Following the Supreme Court's June decision in U.S. v. Arthrex, which reigned in the "unreviewable authority wielded by the APJs during inter partes review[s]," the USPTO quickly set up an interim Director review process by which "[t]he Director  may review final PTAB decisions and, upon review, may issue decisions himself on behalf of the Board." See my prior See my prior June 21, June 29, and July 21 posts on this topic. Since then acting Director Drew Hirshfeld has denied the vast majority of requests that he has received. But, recently, two such requests for Director review have been granted.
In the first case between Ascend Performance and Samsung (order here), the Board found claims 1-5 and 13-17 of U.S. Patent No. 9,819,057 unpatentable; however, the panel failed to separately consider "species claims 5 and 17 ..., which [Samsung argued] are entitled to the provisional priority date and antedate the Shimura reference." Director Hirshfeld agreed that Director review should be granted because "the Board's Decision did not specifically address claims 5 and 17" and "patent claims are awarded priority on a claim-by-claim basis based on the disclosure in the priority applications." The case was remanded to the Board to address the priority question surrounding claims 5 and 17.
In the second (Proppant Express v. Oren Tech., order here), Director Hirshfeld granted review after finding that the Board's analysis of Oren's objective evidence of nonobviousness was "substantially similar" to the Board's analysis in a separate but related case between the parties (IPR2017-01918, Paper 83 (PTAB Feb. 14, 2019)) where, on appeal, the Federal Circuit remanded for further analysis of secondary considerations. Although the Federal Circuit agreed that Oren had established a presumption of nexus, the court ultimately faulted the Board for finding that Oren's commercial success and industry praise were largely a result of non-patented features because "the Board did not contend with and weigh any of the evidence potentially showing that the [patented feature itself] is also an important contributor to the commercial success and praise of the system." Oren Techs., LLC v. Proppant Express Invs. LLC, No. 2019-1778, 2021 U.S. App. LEXIS 21859, at *18-20 (Fed. Cir. July 23, 2021). As in Ascend v. Samsung, the case was remanded to the Board "to weigh any evidence of record showing that the patented invention itself, in addition to any unclaimed elements, contributes to the commercial success and praise of the Sandbox Product."
Based on the result in these two cases-juxtaposed with the many Director review petitions that have been denied-it appears that clear legal issues present the most likely chance of successfully obtaining Director review. But this also holds true for a "routine" request for panel rehearing. What remains to be seen and what I find the most interesting is whether the likelihood of success on these questions will be higher, lower, or the same when Director review is compared to panel rehearing requests. That is, if Samsung and Oren had requested panel rehearing rather than Director review, would they have obtained the same result or would the panel have been less inclined to find fault in their original work and deny rehearing? Going forward, I wouldn't be surprised if the stats support a strategy of seeking Director review for clear (legal) issues, whereas requests for rehearing may be leveraged for delay and/or arguments steeped in the factual record (which the Director, and original panel for that matter, are unlikely to have an appetite for).
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