On June 5^th, 2025, Acting Director Coke Stewart modified a previous Vidal order by announcing that sanctions cancelling claims considered not unpatentable on the merits were too harsh when no “extraordinary circumstances” existed in an Inter-Partes Review (IPR) proceeding. This is a reversal of former Director Kathi Vidal’s position that these sanctions were appropriate in response to a Patent Owner’s misconduct.

PTAB Proceedings and Vidal’s Review

In April 2021, Spectrum Solutions LLC challenged five of Longhorn Vaccines & Diagnostics, LLC’s (“Longhorn’s”) patents in an IPR proceeding. In May 2023, the PTAB Board issued both their Final Written Decision and a Sanctions Order against Longhorn.

The Board found evidence of misconduct by Longhorn, determining they intentionally withheld relevant factual evidence and intentionally provided false evidence to the Board during an IPR. Due to this misconduct, the Board issued a Sanctions Order against Longhorn, cancelling all 183 of Longhorn’s claims across their five patents. Many, but not all, of Longhorn’s claims were not deemed unpatentable on the merits.

In response, former Director Vidal initiated sua sponte Director Review for the Sanctions Order only. In July 2023, she issued her 67-page Director Review Decision affirming the Board’s judgment that Longhorn engaged in “sanctionable misconduct” that violated 37 C.F.R. §§ 42.11(a) and (c), 42.51(b)(1)(iii), and 11.18(b)(2). The Sanctions Order was upheld.

Appeal to the Federal Circuit and Stewart’s Revision

In December 2024, Longhorn filed their brief appealing the Final Written Decision and Sanctions Order to the U.S. Court of Appeals for the Federal Circuit. Longhorn claimed that former Director Vidal lacked the statutory and regulatory authority to cancel claims using a sanction when the claims were not otherwise unpatentable on the merits. Longhorn also claimed that Vidal abused her discretion as Director in upholding the Sanctions Order. The court never considered these claims because the two parties settled in March 2025.

When Acting Director Stewart became acting Director in January 2025, she intervened on behalf of the Federal Circuit and granted a limited remand to revise Vidal’s Director Review. Stewart agreed with the misconduct finding, affirming that Longhorn “engag[ed] in sanctionable misconduct to deceive and mislead the Board through its counsel by:

• intentionally withholding and concealing relevant factual evidence;
• intentionally relying on known falsely elicited expert testimony; and
• intentionally making a false statement of fact.” [Stewart Decision citing the original DRD].

However, Stewart found that “cancelling all challenged claims is not an appropriate sanction here” because “the Board should never cancel claims it has not determined to be unpatentable” when there are no “extraordinary circumstances” present. In this case, Stewart found no “extraordinary circumstances” present. She mentioned that entry of compensatory expenses might be a more appropriate sanction for this type of behavior in the future, but this was irrelevant to the case because the sides settled.

Going Forward

There is no answer to whether the Federal Circuit considers cancelling claims as a sanction when the claims weren’t found to be unpatentable as either within the Director’s power or an abuse of the Director’s discretion because the case settled.

Stewart considered Longhorn’s actions intentionally concealing evidence and more to not be “extraordinary circumstances”; so, for at least similar levels and types of misconduct, it is likely that the less severe sanctions she recommended in this case would be appropriate. This keeps the claims alive but still punishes wrongful conduct. Stewart emphasizes the importance of sanctions and firmly denounces the misconduct and warning that “any future misconduct before the Office will be met with additional sanctions,” but considers Vidal’s approach a step too far.

While this decision was not precedential or informative, parties should be aware of the Director’s position change when they find themselves in IPR proceedings and there is a potential for misconduct. Parties trying to invalidate patents or enforce sanctions should not expect for patentable claims (or, at least, claims not found unpatentable on the merits) to be cancelled based on sanctions alone. They will have to attack the claims along more traditional methods. Parties accused of misconduct should be aware that more lenient sanctions options are available and preferred by the acting Director so that valid claims in their patents would still survive.

We have seen a fairly significant change in the Office’s attitude regarding sanctions because of the change in Director. Should John Squires, Trump’s nominee for Director, be confirmed late this year, it is unclear if he will follow Stewart more lenient view on sanctions are will revert the Office to a stricter view.

Maier & Maier provides experienced IP counsel who can help with patent filings and strategies based on the newest trends and the ever-changing landscape of the USPTO. Maier & Maier always follows developments in USPTO policy to keep our clients informed and provide the best service possible.

In yet another sign of the strength of the U.S. patent system, the USPTO has now issued Pat. No. 11,000,000. The patent, dated May 11, 2021, was for “Repositioning Wires and Methods for repositioning Prosthetic Heart Valve Devices Within a Heart Chamber and Related Systems, Devices, and Methods”.

When the USPTO began numbering patents in 1836, Pat. No. 1 was issued for a traction wheel for steam locomotives and it took 163 years before the USPTO issued Pat. No. 6,000,000 in 1999. Innovation has gained even more steam since then, as the USPTO has issued another 5 million patents in the past 22 years.

“Since the founding of our nation, American inventors have driven our culture and commerce with incredible ideas that have improved every function of our lives. We owe a debt of gratitude to inventors who continue to show up day after day with solutions to the world’s most pressing problems. We congratulate the inventors behind patent 11 million and all of the innovators who helped the country reach this milestone,” described Drew Hirschfield, who is currently performing the duties of USPTO Director.

The patent comes at a time when the USPTO has been among the leaders spurring innovation to help combat the ongoing pandemic caused by SARS-CoV-2. The USPTO has made adjustments to facilitate remote work to ensure functionality throughout the pandemic and enacted additional procedures benefiting applications covering inventions that combat virus.

Maier & Maier is proud to be a part of the ongoing innovation efforts in the U.S. and assisting our clients protecting their hard work. If you have any questions or concerns about the pilot or how it may apply to your applications, please reach out to us here.

As part of January 15, 2021, the USPTO will discontinue the First Action Interview Pilot Program that’s been in place for the past twelve years. The program allows practitioners to conduct an interview with the examiner prior to the first office action. This interview is held after the examiner’s preliminary prior art search and allows the practitioner to submit amendments prior to the first action response to the prior art and discussion.

As the USPTO explains;

Under the Full First Action Interview Pilot Program, an applicant is entitled to a first action interview, upon request, prior to the first Office action on the merits. The examiner will conduct a prior art search and provide applicant with a condensed pre-interview communication citing relevant prior art and identifying proposed rejections or objections. Within 30 days of receipt, applicant schedules an interview and submits proposed amendments and/or arguments. At the interview, the relevant prior art, proposed rejections, amendments and arguments will be discussed. If agreement is not reached, the applicant will receive a first action interview Office action that includes an interview summary that constitutes a first Office action on the merits under 35 USC 132.

In their announcement, the USPTO cited the low (0.2%) usage rate as the primary reason for the termination. This low usage stands in stark contrast to the rising rate of interview usage overall, with the peak coming this past October at 38.1%.

This increased interview use is with good cause, as Maier & Maier’s practitioners have had significant success using interviews to get favorable outcomes for our clients. The firm’s office is located just blocks away from the USPTO Headquarters in Alexandria, Virginia, providing easy access to in-person interviews.

If you have any questions about interviews or would like to take advantage of this program before it ends on January 15, 2021, please contact us here.

As part of the U.S. Federal Government’s response to Covid-19, the USPTO announced programs to prioritize Covid-19 related patent and trademark applications this past May and June respectively. Since this summer, applicants were permitted to apply for special status without the normal payment requirements for special status.

Thus far, the USPTO has ushered in nearly 400 such applications with 251 patent requests and 133 trademark petitions granted. Of the patent applications, most target medical treatments, vaccines, and diagnostic technology. The remaining make claims on ventilators, personal protective equipment (PPE), and other similar technology.  The program has resulted in 33 granted patents already related to combatting Covid-19.

“Our staff is working very hard to move COVID-19 related patent and trademark requests, ensuring the intellectual property system is fully responsive to this national emergency,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Over the past two centuries, solutions to some of the nation’s greatest problems have passed through the halls of the USPTO, and it’s very likely that some of the solutions to America’s current pandemic have already been examined by this agency.”

The success of these programs reflects the monumental efforts made by the USPTO in its Covid-19 response, as we’ve covered throughout.

Maier & Maier has embraced these programs to assist our clients and help combat the ongoing virus. If you have any questions or concerns about the pilot or how it may apply to your applications, please reach out to us here.

This Thanksgiving, Maier & Maier’s Steve Kunin noted the strength of USPTO leadership as Director Iancu deftly handled the ongoing pandemic to keep the office productive and effective.

“We should continue to be grateful for Director Andrei Iancu’s leadership and stewardship of the USPTO during these trying times caused by the adverse impacts of COVID-19. With his strong leadership, the USPTO has continued to provide vital services to the patent and trademark user communities.”

Kunin specifically noted the Iancu’s adjustments at the USPTO and responses to pandemic challenges as covered here.

“His outreach efforts have been well received and the USPTO has been open-minded and responsive to public feedback on how it can make continuous quality improvements to its services and products.”

As Kunin notes, this leadership would have been lost if not for the dedication of the USPTO employees as a whole who were forced to adjust to extensive telework like many other industries.

“Kudos as well to all the USPTO employees who have had to adapt to more extensive telework while striving to maintain continuity of operations.”

For more thoughts on the year in IP and appreciation from other experts and practitioners, see the full piece here.

There are currently multiple significant IP cases pending at the Supreme Court, including both the Oracle case and the Arthrex cases, and a number of petitions denied cert. Here are the latest case updates on IP at the Supreme Court:

Google v. Oracle

On October 7^th, the Supreme Court heard oral arguments for the Google v. Oracle case on appeal from the Federal Circuit. The case centers around the Android operating system designed by Google in their first foray into the smartphone arena. In the coding, Google used 11,000 lines of the Java SE platform coding for common interface commands. Oracle, the current owner of the Java SE platform, filed suit on the basis that the use of the lines constituted infringement. While a jury found them to be “fair use”, the Federal Circuit disagreed, reversing the decision, and leading to the current appeal at the Supreme Court.

Accordingly, the questions before the Supreme Court now are:

(1) Whether copyright protection extends to a software interface; and

(2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

The decision could be the most significant copyright decision in at least a decade and will be important to developers and practitioners alike to watch moving forward.

Arthrex

Earlier this month, the Supreme Court denied certiorari to a number of cases. Notably this does not include the Arthrex cases challenging the constitutionality of the USPTO’s Patent Trial & Appeal Board.

On October 14,, 2020, as predicted by Maier & Maier’s own, Steve Kunin, the Supreme Court granted cert in three related Arthex cases: (1) United States v. Arthrex, Inc. (19-1434), (2) Smith & Nephew, Inc. v. Arthrex, Inc. (19-1452), and (3) Arthrex, Inc. v. Smith & Nephew, Inc. (19-1458).

The case rests on the question of whether the Administrative Patent Judges (“APJ’s”) are principal officers or inferior officiers, and accordingly, whether their appointment is constitutional. Specifically, the Supreme Court has identified the following two questions for review:

(1) Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or ‘inferior Officers’ whose appointment Congress has permissibly vested in a department head.

(2) Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.

Briefing and oral arguments, as well as likely amicus briefs will likely follow before these questions are resolved, and may be one of the first cases heard by any replacement for the late Ruth Bader Ginsburg on the Court.

Cert Denied

Unlike the pending Oracle and Arthrex decisions, the following cases have been denied certiorari by the Supreme Court and will not be heard on appeal:

• • • BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., fka MonoSol RX, LLC, No. 19-1381 (Appealing IPR Termination)
    • TCL Communication Technology Holdings Limited v. Telefonaktiebolaget LM Ericsson, No. 19-1269 (Right to a Jury Trial for Specific Performance of FRAND license)
    • Willowood, LLC v. Syngenta Crop Protection, LLC, No. 19-1147 (Divided Infringement and 271(g))
    • The Chamberlain Group, Inc. v. Techtronic Industries Co., No. 19-1299.; Thomas v. Iancu, No. 19-1435; Primbas v. Iancu, No. 19-1464; Morsa v. Iancu, No. 20-32 (Patent Eligibility)
    • Ameranth, Inc., Petitioner v. Domino’s Pizza, LLC, No. 19-1351 (Sua Sponte Judicial Order Due Process)
    • Polidi v. Lee, No. 19-1430; Piccone v. United States Patent and Trademark Office, No. 19-8844 (Exclusion of Patent Attorneys by USPTO)
    • SRAM, LLC v. FOX Factory, Inc., No. 20-158 (Secondary Indicia for Obviousness nexus)
    • Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1204 (Application of IPR decisions retroactively to related pending applications)
    • Cheetah Omni LLC v. AT&T Services, Inc., No. 20-68 (Licensing Patents under Federal & State law)

As Artificial Intelligence (“AI”) continues to transform industries across both the U.S. and the globe, the United States Patent and Trademark Office has been handling the issues at a much higher rate. In response to the developing field, the USPTO released a report on AI and the related Intellectual Property issues.

“The USPTO has long been committed to ensuring our nation maintains its leadership in all areas of innovation, especially in emerging technologies such as artificial intelligence,” highlighted Andrei Iancu. Director of the USPTO. In preparing the report, the USPTO sought input from and received comments from over 200 comments from bar associations, trade associations, law firms, academic authorities, industry practitioners in electronics, software, automobiles, medical and pharmaceutical industries, and foreign patent offices.

Overall, the report indicates that there is a high degree of confidence in the USPTO to handle many of the issues relating to patent, trademark, and copyright issues relating to AI. The report also emphasized the importance of maintaining a close eye for the developments in this industry to ensure the U.S. maintains its status as a global leader in this critical technology.