By Lisa Furby and Matt Johnson

Within the past few weeks, the PTAB has issued new guidance addressing a number of important issues including the use of applicant admitted prior art, the Director review process, and changes to PTAB hearings going forward.

Earlier this month, Director Vidal issued updated guidance clarifying the permissible use of applicant admitted prior art (“AAPA”) in IPR proceedings.  This newly issued guidance, adopted in view of the Federal Circuit’s recent decision in Qualcomm Inc. v. Apple Inc., clarifies the PTO’s view on how applicant admitted prior art can be relied upon in an IPR proceeding. The new guidance supersedes guidance originally issued by the USPTO in 2020.

The USPTO has also issued updated guidance further clarifying that, when requesting Director review, parties should specifically identify any issues of first impression.  In this same announcement, the USPTO indicated that it will soon formalize the Director review process, and is seeking public feedback on this, and all provisions of the Director review process, by July 11, 2022.

Finally, the PTAB has announced it plans to re-establish the option of having in person hearings by mid-July.  The announcement makes clear that, at least for now, this is optional and that the PTAB will only conduct in-person hearings when it is requested by all parties.  Even with a return to some in-person hearings, the announcement further cautions that hearings will likely still have one or more judges attending virtually.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.