Palo Alto petitions Fed Circ over USPTO IPR audits
Cybersecurity firm Palo Alto Networks has said that the US Patent and Trademark Office’s refusal to consider its bid for director review raises “serious constitutional concerns”.
In a petition filed to the US Court of Appeals for the Federal Circuit on Tuesday, April 20, Palo Alto asked the court to accept its request for a director rehearing of two Patent Trial and Appeal Board (PTAB) decisions denying reviews of two patents.
It had asked the patent board to institute an inter partes review of US patent 10,659,572 and post-grant review for US patent 10,931,797.
The California-based company claimed that the agency rejected its request to institute a director review as part of a “blanket” policy to “At this time… not accept requests for director review of decisions”.
“Parties may only request director review of final written decisions issued in inter partes reviews and post-grant reviews,” the USPTO said.
‘Constitutional violation’
Palo Alto said the decision to not consider review requests was “incompatible” with the appointments clause as outlined in the Supreme Court’s 2021 decision in US v Arthrex.
In that decision, the Supreme Court gave the director of the USPTO the power to review decisions made by the Patent Trial and Appeal Board’s administrative patent judges (APJs) after ruling that they were classed as “inferior officers”.
As APJs are not handpicked by the US president, their decisions must be appealable in order to be allowable under the appointments clause of the US constitution.
Palo Alto Networks seeks a writ of mandamus from the Federal Circuit to “compel” the agency to accept its requests for director rehearing in two proceedings before the PTAB.
The proceedings in question are IPR2021-01151 and PGR2021-00108.
Central to its petition is the question of whether “the PTO’s blanket policy of refusing to accept requests for director rehearing of decisions not to institute impermissibly consign these decisions solely to the discretion of inferior officers and thus run afoul of the Constitution?”
Palo Alto added: “The agency’s policy to not accept any requests for director rehearing associated with an institution decision shields those decisions from any director review and creates serious constitutional concerns regarding the Appointments Clause and the exercise of executive power.
“A constitutional violation that goes to the heart of executive authority cannot be called anything other than an exceptional circumstance.
Palo Alto’s petition comes at a time of substantial change at the USPTO. Last week, the office officially swore in its new director Kathi Vidal, a year after she was selected as President Joe Biden’s candidate to head the IP office.
She succeeds interim director Drew Hirshfeld, who will now serve as the deputy director, and is the first permanent director since Andrei Iancu, who stepped down in 2021.
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