Director Vidal 2022

The Senate Judiciary vetted USPTO Director Nominee Kathy Vidal earlier this month. Not surprisingly, the hearing was fairly uneventful (even for uber-geeks, like myself). With a confirmation vote looming, some final written materials have been submitted by Ms. Vidal that are similarly generic in espousing any particular viewpoint that could be labeled as “pro-patent” or “anti-patent.” That said, reading the tea-leaves, there are some PTAB developments that seem inevitable for 2022 given the current landscape.

You can find Ms. Vidal’s most recent written comment submission (here)

Perhaps the most interesting exchanges in the written submissions are with Senators Leahy, Cornyn, and Tillis. Reading those comments, you will see that the PTAB issues are mostly focused on perceived fairness of the AIA process, Fintiv, and parallel proceedings. Both Leahy and Tillis, while on opposite sides of Fintiv practices being lawful, have both been highly-critical of the PTAB utilizing unrealistic trial schedules in these analyses. Ms. Vidal, while coy in her response, is undoubtedly on-board with this criticism given the vocal support she has received from Senator Leahy (co-sponsor of the Restoring America Invents ACT (RAIA), Cornyn being the other co-sponsor). As such, I would expect that the first change under Director Vidal in 2022 will be designation of new PTAB precedent that makes clear that any Fintiv analysis should use average time to trial in a given district over speculative schedules – likely a WDTX case.

Ms. Vidal has generally stated that she will consider the recent comments submitted with respect to Fintiv practices, but the first change may be enough to appease her sponsors as they work toward outlawing Fintiv via the RAIA legislation. Average time to trial in WDTX —in combination with a petition filed within 4-6 months of suit— would likely be enough to stave off any Fintiv discretion. But, Fintiv would still be viable for other rocket dockets, such as the ITC. Interestingly, Ms. Vidal did highlight the different attitudes of district courts toward stays pending PTAB review, and explained that the Covered Business Method (CBM) statutes did provide some consistency in this regard (at least in parallel CBM cases, before the sunset of the statute). The mentioning of the inconsistent stay analysis together with the CBM framework was not happenstance given that this is a current component of the RAIA.

A second change that seems inevitable is adopting a deadline for the PTAB to issue its rehearing decisions. This is something also currently proposed in the RAIA, and frankly, speaking as a practitioner, is long overdue. This is also a fairly easy change as all stakeholders prefer certainty in the process. As it stands, rehearings can remain pending for months, but in more extreme cases, even years.

A third change will be the Director Rehearing process. As also proposed in the RAIA, written explanations of Director Rehearing denials will be required. This promotes transparency, but I would still expect such write-ups to be more concise than an FWD, perhaps just presenting Director findings followed by the rationale as written in the FWD (where accepted).

Finally, I expect that Director Rehearing will become available for non-institution decisions (but not institution). This is because the Arthrex rationale of the final agency decisions coming from an inferior office is the same here as it is after FWD (denial cannot be appealed). In the case of institution, however, that determination is preliminary, and subject to later Director Rehearing.

The changes above are far from earth shattering. This is low hanging fruit already highlighted in the RAIA, and alluded to the recent written submissions of Ms. Vidal (above).

I’m also predicting a mild winter for DC, and a Buccaneers/Patriots Super Bowl…in case you were wondering.