Hirshfeld grants first USPTO director review after Arthrex
The acting director of the US Patent and Trademark Office Drew Hirshfeld has agreed for the first time to review a final written decision from the Patent Trial and Appeal Board (PTAB) after being given oversight over the board’s rulings in the Supreme Court’s Arthrex decision.
Hirshfeld will rehear a decision in Patent Trial and Appeal Board (PTAB) proceedings that invalidated a Samsung lithium battery patent, according to an order handed down on Monday, 1 November.
The June 21 decision in the United States v Arthrex gave the director of the USPTO authority to challenge final PTAB decisions. This order marks the first time that power has been exercised.
Hirshfeld is currently filling the role of director at the USPTO, but last week President Joe Biden officially nominated the head of Winston & Strawn’s Silicon Valley office Katherine (Kathi) Vidal to officially take the position.
Samsung requested that Hirshfeld review the PTAB’s final decision on August 14, claiming the board erred in finding challenged claims in US patent 9,8199,057 obvious in light of two references named Fujii and Yamada. As a result, the Board found claims 1-5 and 13-17 unpatentable.
Samsung also claimed that the board’s obviousness ground of unpatentability over the two references “materially differed” from the grounds asserted in the petition and that the board “improperly ignored” the specification and prosecution history of the ‘057 patent in proceedings.
In the order granting the review, Hirshfeld claimed that the PTAB board did not specifically address the patentability of claims 5 and 17 of the ‘057 patent, leading him to vacate the final written decision and order the PTAB to issue a new one.
Post-Arthrex process
The USPTO issued new interim procedures in June following the Arthrex ruling, giving the office’s direct to rehear final PTAB rulings and allowing parties to request an inter partes review or post-grant review of the decision from the director.
To further clarify the process, the office also released a Q&A further detailing the review process.
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