PTAB Digest 2021/2022: The Latest Trends and Developments in Post-Grant Proceedings

The PTAB Digest 2021/2022 provides an overview of PTAB statistics, trends, and updates that impact strategies and business decisions for patent owners and petitioners alike. 

Significant developments included the following:

• In United States v. Arthrex Inc., the US Supreme Court held that the unreviewable authority of the administrative patent judges (APJs) violates the Appointments Clause, but remedied the violation and preserved the PTAB by giving the USPTO Director the right to review PTAB decisions.
• The US Court of Appeals for the Federal Circuit found that claim language specifying a particular article of manufacture limited the scope of the design patent and the prior art that can be used to anticipate it.
• The PTAB provided further guidance on whether declarations of unavailable experts are subject to challenge on hearsay grounds and whether validity challenges in prior district court litigation are sufficient for discretionary denial under Fintiv.
• The USPTO introduced the Deferred Subject Matter Eligibility Response pilot program to allow participating applications to defer responding to subject matter eligibility rejections until the earlier of a final disposition of the application or a withdrawal or obviation of all other outstanding rejections.