Decision: In re Palo Alto Networks, Inc., No. 22-145 (Fed. Cir. 2022) (precedential).
Analysis and Comments
In the most recent Federal Circuit decision addressing the topic of USPTO Director Review, the Federal Circuit held that the Director's "delegation of authority as to whether to institute IPR and PGR proceedings to the [APJs of the Patent Trial and Appeal Board ('PTAB')] and the Director's policy refusing to accept party requests for Director rehearing of decisions not to institute do not violate the Appointments Clause." Id. at *6.
Palo Alto Networks, Inc. ("PAN") filed petitions for IPR and PGR on two patents owned by Centripetal Networks, Inc. While PAN's petitions were pending, the USPTO issued interim guidance stating that the agency "does not accept requests for Director review of decisions on institution." Id. After the PTAB denied institution of PAN's petitions, PAN filed Requests for Director Rehearing seeking review of the non-institution decisions. Id. The USPTO denied these requests, stating that "[a]t this time, the [USPTO] does not accept requests for Director Review of decisions on institution . . . ." Id. PAN then sought a writ of mandamus from the Federal Circuit, compelling the USPTO to accept and consider its Requests for Director Rehearing.
Citing United States v. Arthrex, PAN argued that the USPTO's categorical refusal to accept requests for Director Review of institution decisions violates the Appointments Clause. Id. at *4; 141 S. Ct. 1970 (2021). The Federal Circuit disagreed, noting this case is fundamentally different from Arthrex because, here, there is no...
