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***NHK-FINTIV INSTRUCTIONS WERE NOT SUBJECT TO NOTICE-AND-COMMENT RULEMAKING UNDER THE APA
Apple Inc. v. Squires, 24-1864 — On Friday in an opinion by Judge TARANTO, the Federal Circuit affirmed a district court decision that instructions from the USPTO Director governing how the Patent Trial and Appeal Board (PTAB) would exercise the Director’s discretionary authority to decline institution of inter partes review (IPR) proceedings under the America Invents Act (AIA) were a “general statement of policy” exempted from notice-and-comment rulemaking. Apple argued the district court erred in its analysis under § 553 of the Administrative Procedure Act (APA).
The Federal Circuit disagreed. The instructions were neither binding nor purported to bind the statutory decisionmaker; the Director could always “make the non-institution (or institution) decision personally,” notwithstanding a PTAB initial decision, and the instructions “simply inform[ed]” the PTAB how it should exercise the Director’s discretionary power. That the Director generally had not displaced the PTAB’s initial decisions in the past did not mean the Director had “effectively treated those instructions as binding,” but that the PTAB’s decision had “reflected the Director’s judgment at the time.” Although Apple alleged it had been harmed by the instructions effectively reducing the likelihood of institution, it had “no right to an IPR” under the Director’s broad, judicially unreviewable discretion. This strongly indicated the instructions were merely “statements issued by [the PTO] to advise the public prospectively of the manner in which the agency proposes to exercise a discretionary power,” “presumptively unreviewable,” and “committed to agency discretion.” Finally, the instructions left a patentee’s rights unchanged from what they were prior to Congress enacting the IPR regime and had no legal effect on the underlying patent rights and obligations.
(1 to 4 stars rate impact of opinion on patent & trademark law)
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*USPTO INCORRECTLY CONSTRUED CLAIM LIMITATION IN MEDIA STREAMING PATENT
Netflix, Inc. v. DivX, LLC, 24-1541 — On Friday in an opinion by Judge TARANTO, the Federal Circuit vacated a USPTO inter partes review decision that DivX’s patent for a method of streaming partly encrypted media was not invalid as obvious. Netflix argued the USPTO had incorrectly construed a limitation that required “locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video” as “that the encryption information is located within the requested portions of the selected stream of protected video.”
The Federal Circuit agreed. The plain language and syntax suggested that “within the requested portions of the selected stream of protected video” could modify either “encrypted portions of frames of video” or “encryption information.” The principles of claim construction assumed that “a claim modifier is presumptively understood to be tied to the nearest available semantically plausible modificand,” making the proper default interpretation that only the “encrypted portions of frames of video” needed to be “within the requested portions of the selected streams.” This interpretation also logically related to the following limitations, which did not require “encryption information.” Although several embodiments in the specification involved the location of the encryption information, it also indicated that the invention covered “embodiments in which encryption information is not so located.” Finally, previously issued patents in the same family sharing the same specification called for “encrypted information” to be located outside the “requested portions of selected streams.”
(1 to 4 stars rate impact of opinion on patent & trademark law)
IPO COSPONSORS USPTO EVENT MARKING 150TH ANNIVERSARY OF BELL TELEPHONE PATENT
IPO is cosponsoring a March 5, 2026, program at the USPTO commemorating the 150th anniversary of Alexander Graham Bell’s telephone patent and examining the role of intellectual property in advancing communications innovation. The hybrid event, titled “Alexander Graham Bell’s Telephone Patent: 150 Years, a World of Connection,” will be held at USPTO headquarters in Alexandria, Virginia, and will also be available virtually.
The program will feature remarks and panel discussions with industry, academic, and government leaders on the evolution of communications technologies and the importance of the patent system in fostering innovation. Registration is open to the public through the USPTO website, and interested participants may register to attend in person or virtually.
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IPOWNERS SPRING SUMMIT SESSION ON DAMAGES AND INJUNCTIONS – MARCH 19
Register to attend IPOwners Spring Summit™ on March 19 in Washington, DC and attend a session on “How Jurisdictions’ Primary Remedies Incentivize Innovation and Investment,” organized by IPO’s U.S. Patent Litigation Committee. As corporations compete globally and patent litigation battles are fought across major country or regional jurisdictions, a key consideration in selection of forum is the availability of the patentee’s preferred remedy. This session will explore how patent adjudication systems incentivize innovation and R&D investment by prioritizing damages or injunctive relief in patent litigation. Panelists will focus on (a) the effect that remedies have on patent litigation strategies, particularly the choice of forum, and (b) the consequences for multinational businesses in R&D and major capital investment. Visit the website to view the full program or to register.
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