Federal Circuit Rejects US Inventor Bid for Rulemaking to Limit IPR/PGR Institution

"The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday issued a precedential decision affirming the U.S. Patent and Trademark Office's (USPTO's) denial of a petition for rulemaking filed by US Inventor (USI) asking the Office to establish criteria to limit its authority to institute inter partes review (IPR) or post-grant review (PGR) under the America Invents Act (AIA). Following the denial of their petition by the USPTO in October 2021, USI filed a complaint with the United States District Court for the District of Columbia, arguing that the Office committed three errors in denying the rulemaking request:"

"First, the PTO 'failed to 'conclude a matter presented to it' 'within a reasonable time' under the Administrative Procedure Act ('APA')...because the PTO's denial only promised consideration of the petition's suggestions 'in unspecified 'future rulemaking.' Second, the PTO failed to provide 'a brief statement of the grounds for denial' under the APA...because the PTO's promise to consider the petition's suggestion in a future rulemaking was not a 'statement of the grounds for denial' and was arbitrary and capricious. Third, the PTO failed to promulgate notice-and-comment rulemaking as required by the AIA's 'statutory framework.'"

"The district court ultimately granted the USPTO's motion to dismiss, however, chiefly because "appellants lacked organizational and associational standing" to sue. On appeal to the CAFC, USI argued the district court erred in dismissing the complaint due to lack of standing because they have associational standing. USI told the CAFC the USPTO's denial of the petition means "their members suffer the injury of 'the risk of cancellation of a patent and/or patent claim as a result of institution,' but"

The Federal Circuit upheld the USPTO's denial of a US Inventor petition seeking rulemaking to limit institution of inter partes review and post-grant review under the America Invents Act. USI had sued after the Office denied the petition in October 2021, alleging APA violations: unreasonable delay, failure to state grounds for denial, and failure to engage in required notice-and-comment rulemaking. The district court dismissed the complaint for lack of organizational and associational standing. On appeal, USI asserted associational standing based on members' risk of patent cancellation, but the Federal Circuit found asserted causal links speculative and affirmed lack of standing.

Read at IPWatchdog.com | Patents & Intellectual Property Law