"Last week, former United States Patent and Trademark Office (USPTO) Director Katherine Vidal filed an amicus brief on behalf of the Public Interest Patent Law Institute (PIPLI) with the U.S. Court of Appeals for the Federal Circuit (CAFC) in In re Cambridge Industries USA Inc., urging the court to set aside the USPTO's recently adopted "settled expectations" rule for discretionarily denying inter partes review (IPR) petitions."
"The Patent Trial and Appeal Board (PTAB) denied institution based solely on the new settled expectations rule. On June 27, 2025, former Acting Director Coke Morgan Stewart determined that because the patents "have been in force for nine and seven years, respectively," the patent owner's "settled expectations" were "stronger and discretionary denial is appropriate," according to the decision."
""The rule 'radically departs from the Congressional mandate of the AIA' and was adopted 'without notice-and-comment rulemaking, without economic analysis, and without regard to its chilling effect on innovation and competition.'""
Former USPTO Director Katherine Vidal urged the Federal Circuit in In re Cambridge Industries USA Inc. to set aside the USPTO's "settled expectations" rule for discretionary denial of inter partes review petitions. Cambridge seeks mandamus relief, arguing the doctrine did not exist when its petitions were filed. The PTAB denied institution of two petitions challenging U.S. Patents 9,523,826 and 10,042,116 solely under the new rule. Former Acting Director Coke Morgan Stewart cited the patents having been in force nine and seven years as justification. PIPLI characterized the rule as departing from the AIA, adopted without notice-and-comment or economic analysis, chilling innovation and disproportionately insulating older patents.
Read at IPWatchdog.com | Patents & Intellectual Property Law
Unable to calculate read time
Collection
[
|
...
]