Kathleen Cooney-Porter has announced her return to the USPTO to serve as a senior trademark advisor Under Secretary and Director of The United States Patent and Trademark Office. Ms. Cooney-Porter is an expert in trademark matters having previously worked both at the USPTO as a trademark examiner and senior law advisor as well as in private practice at both law firms and as a consultant. Maier & Maier thanks her for her time as a partner and wishes her well at her new role.

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.

Initially announced in a news brief, beginning next week on May 13, 2025, the U.S. Patent and Trademark Office (USPTO) will be accelerating the Issue Dates for patents. Previously, the time between Issue Notification and Issue Date averaged around three weeks. The USPTO is reducing that time to approximately two weeks, allowing patent holders to bring their investments to the market earlier.

 

Previously the USPTO required time between grant and issuance in order to format and print the patent, however as the Office has now switched to publishing electronic grants (eGrants) via their online platform Patent Center this is no longer necessary. Additionally, the USPTO indicated further time is saved by eliminating redundancies in the process.

 

By shortening the wait time between the Issue Notification and the Issue Date, Applicants may avoid the need to file a Quick Path Information Disclosure Statement, and the prompter patent issuance will provide earlier protection for inventions. The change also reduces the lame duck period where the inventors and attorneys still have a duty to submit known prior art but where such submission might delay issuance. Further information about  eGrants, Patent Center, and other USPTO modernization efforts can be found on the USPTO website.

 

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.

We are thrilled to announce that Stephen Kunin, one of the partners at Maier & Maier, has been recognized as one of the IAM Strategy 300 Global Leaders 2025. This prestigious award highlights Stephen’s exceptional expertise and leadership in the intellectual property (IP) field.

A slot in the 300 is the mark of a professional whose approach to intellectual property is regarded by peers as truly strategic in nature. The list features individuals from all kinds of entities that are selected for their skill, contribution and success – whether service providers, corporations, research institutions or universities. The selection process involves thousands of nominations, interviews, and in-depth evaluations conducted by IAM’s research team over several months, making this recognition an extraordinary achievement.

Stephen’s wealth of knowledge and ability to innovate serve as a boon not just to Maier & Maier but to the broader IP community. Once again we congratulate Stephen on his achievement, To explore more about the IAM Strategy 300 Global Leaders 2025, visit the IAM website.

On April 17, 2025, the USPTO formally announced the termination of the Climate Change Mitigation Pilot Program. The Climate Change Mitigation Pilot Program was launched in June 2022 as a replacement to the Green Technology program and allowed for applications involving technologies that reduce, remove, prevent, and/or monitor greenhouse gas emissions to be made special (advanced out of term for examination).

The program was initially scheduled to run until June 7, 2027, or until 4,000 applications had been granted special status under the program. The program was first suspended on January 28, 2025, and then formally terminated April 17, 2025. A press release by the USPTO stated that “(t)erminating the program allows us to dedicate our resources to reducing pendency across all applications, regardless of the technology to which the application is directed”. You can find more information in the Federal Register Notice.

The Federal Circuit clarified that a published U.S. application (published application) is available for IPR as long as its filing date (its “effectively filed” date in AIA vernacular) is before the priority date of the challenged patent, even if the publication date of the published application is after the priority date of the challenged patent.

A published application is available as prior art as a printed publication under pre-AIA sections 102(a) and 102(b) as of its publication date, but (like a U.S. patent) is also available under as prior art under pre-AIA section 102(e) as of its filing date. The AIA retains this attribute of published applications: a published application is available as prior art under section 102(a)(1) as of its publication date, and is also available under as prior art under section AIA 102(a)(2) as of its filing date (effectively filed date).

Lynk Labs argued that, despite the available of a published application as prior art under pre-AIA section 102(e) as of its filing date, a published application is not available for use in an IPR unless that published application was published or accessible to the public prior to the priority date of the challenged patent. Section 311(b) limits the scope of an IPR to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Lynk Labs’ argument is based upon a nuanced reading of section 311(b), that the scope of IPRs is limited to “prior art” patents and “prior art” printed publications, and that while a patent have a prior art effect of under pre-AIA section 102(e)(2) as a “patent,” a  “prior art” printed publication is effective as prior art only as of its publication date (or public accessibility date). That is, since section 311(b) refers to patents and printed publications, but does not specifically call out published applications, the provision of section 102(e)—giving prior art effect as of the filing date—applies to patents as used in section 311(b) but does not apply to published applications as published applications are not specifically mentioned in section 311(b).

The Federal Circuit agreed that a published application is a “printed publication,” but pointed out that that a published application is a specific type of printed publications, a type of “printed publication” that by virtue of section 102(e)(1) is prior art as of its filing date.  The Federal Circuit thus concluded that the plain language of sections 311 and 102(e) permit an IPR challenge based upon published applications and that such published applications are effective as prior art as of their filing date.

The Federal Circuit rejected Link Labs’s arguments concerning the case law requirements of public accessibility, not only that a reference be accessible to the public but when it must be accessible to the public, to quality as a “printed publication.” The Federal Circuit discussed the legislative background of reexamination (added in 1980) , inter partes reexamination and eighteen-month publication with the prior art effect of published applications (added in 1999), and IPR—replacing inter partes reexamination (in 2011). The Federal Circuit rejected the argument that published applications are not printed publications, or are printed publications only if accessible to the public before the priority date of the challenged patent, as based upon case law (or “old soil”) from an era before pending patent applications were published. Thus Federal Circuit thus disagreed with the contention that a published application is a “prior art” “printed publication” for purposes of 311(b) only as of the date it is published or accessible to the public.

In short: a published application is available for IPR as long as its filing date is before the priority date of the challenged patent, even if the publication date of the  published application is after the priority date of the challenged patent.

On December 18, 2024, the Subcommittee on Intellectual Property of the U.S. Senate Committee on the Judiciary held a hearing concerning the Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act of 2024.[1] Senator Coons (one of the senators co-sponsoring the Act) led the hearing.

Senator Coons emphasized during the hearing that the Act seeks to bring back, what he views as, the Constitutional right for inventors to prevent others from using their inventions. He noted that for over 200 years, courts almost always granted injunctions when a patentee asked for one. Senator Coons emphasized that predatory infringement, an “infringe now, pay later” model is on the rise and thus patent values have decreased, and data shows patentees are being forced to grant lower-value, non-exclusive licenses. This leads to abandoning innovative ideas and reduced research and development investment.

The Subcommittee heard from four witnesses at the hearing. Jacob Babcock, CEO at NuCurrent, Joshua Landau, Senior Counsel, Innovation Policy Computer and Communications Industry Association, Kristen Jakobsen Osenga, Professor of Law at the University of Richmond School of Law, and Jorge L. Contreras, Professor of Law at University of Utah S.J. Quinney College of Law. The witnesses presented varying viewpoints questioning and supporting the Act and took questions from the senators.

Senator Coons’ questions indicated that he was concerned with what he termed “efficient infringement” (or predatory infringement, referenced above). Essentially a company, either domestic or foreign, knowingly infringes a patent and only if the patentee sues them and sees litigation through, does the alleged infringer suffer any consequences. The concern raised by Senator Coons was that the infringement is simply a cost of doing business and the patentee, even if they win the litigation, does not see adequate reward for their invention because the infringer continues to make money on the infringing product and merely has to pay a license fee.

Another concern raised by some of the witnesses and Senator Coons, is that the eBay decision[2] distorted statistics on the requesting and granting of permanent injunctions, where parties no longer seek injunctive relief and thus the current statistics do not accurately reflect how difficult it is to have an injunction granted in one’s favor.

Questions from the senators also indicated that they are concerned with the apparent burden shifting that resulted from eBay. Under the eBay factors, it is the patentee’s burden to show that an injunction should issue. The senators (especially Senator Hirono) deemed it more appropriate to create a presumption that an injunction should issue and place the burden on the infringer to show otherwise.

The witnesses also proposed certain revisions to the one-sentence Act that would potentially address the overbreadth that was raised as a concern. One such suggestion was to attach the presumption of an injunction to the requirement that a patentee be producing or making a product. This would mean that non-practicing entities could not take advantage of the Act and would instead have to proceed through the traditional eBay factors.

The hearing was helpful, as it shed light on concerns held by multiple senators regarding an alleged stifling of innovation due to eBay. The Act may be changed to disallow non-practicing entities from taking advantage of the easier injunctive relief offered, but only time will tell. We will continue to monitor the Act’s progress and provide updates.

[1] https://www.judiciary.senate.gov/committee-activity/hearings/the-restore-patent-rights-act-restoring-americas-status-as-the-global-ip-leader

[2] The Supreme Court’s eBay decision was discussed in greater depth in our first article on the RESTORE Act: https://maierandmaier.com/restore-patent-rights-act-of-2024-an-attempt-to-bring-back-permanent-injunctions-permanently/