Recent cases show the U.S. Patent and Trademark Office director's interest in using director review to address substantive issues like obviousness, not just procedural matters or changes in the law. Grants in these cases, though uncommon, have provided relief to petitioners.
For example, in Nearmap US Inc. v. EagleView Technologies Inc., the director deemed the Patent Trial and Appeal Board's analysis insufficient due to lack of proper consideration of evidence weight and failure to address claim construction disputes in the obviousness analysis. Similarly, in Hesai Technology Co. Ltd. v. Ouster Inc., the director found errors in the board's failure to fully consider relevant prior art.
Moreover, in Prime Time Toys LLC v. Spin Master Inc., the director intervened when the board gave undue weight to the petitioner's expert without addressing key points from the patent owner's expert.
While director review grants remain rare, petitioners should consider seeking it for substantive issues like obviousness when all evidence may not have been adequately evaluated by the board.
These three recent cases highlight the director's willingness to use director review to weigh in on substantive issues, such as obviousness, as opposed to strictly procedural issues or changes in law.
The director appears particularly interested in cases where a party can demonstrate that the board failed to consider certain evidence or otherwise provided insufficient analysis to support its decision.
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