Apple v. Vidal: APA Compliance in IPR Discretionary Denial Rules

by Dennis Crouch

I have written several times about the Chestek case regarding notice-and-comment requirements under the APA.  A second notice-and-comment case is also pending before the Federal Circuit, potentially having a much greater impact on patent practice.  The case, Apple v. Vidal, focuses on IPR discretionary denials, which the USPTO implemented as policy without any formal rulemaking notice-and-comment. In Apple, the Federal Circuit is being asked to consider:

Whether, by adopting the NHK-Fintiv Rule without notice-and-comment rulemaking, the Director violated (1) the APA, 5 U.S.C. § 553, and (2) the AIA, 35 U.S.C. § 316(a)(2), (4)

In my view, the discretionary denial rules are clearly substantive and binding on PTAB judges — putting the district court’s decision likely in the error column.  Although Apple is the first-named appellant, other parties seeking to overturn the rule include Cisco, Google, Intel, and Edwards LifeSciences.  This appeal represents the latest development in a coordinated effort by these companies to curtail the USPTO’s discretion in denying IPR institution.

• Apple v. Vidal Appellant Brief
• Apple v. Vidal NRF CCIA Amicus
• Apple v. Vidal Askeladden Amicus
• Apple v.

Continue reading Apple v. Vidal: APA Compliance in IPR Discretionary Denial Rules at Patently-O.