Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about:
USPTO Fee Increases Include 25% for AIA Trials
Effective January 19, 2025, the USPTO is increasing various patent filing fees, including an across-the-board fee increase as well as specific increases for America Invents Act trials, Director Review, and other procedures.
According to the USPTO’s Fee Setting and Adjusting webpage, “The fee adjustments are needed to provide the agency with sufficient aggregate revenue to recover the aggregate costs of patent operations in future years (based on current projections) and to allow the agency to continue progress toward achieving its strategic goals.”
According to a final rule issued November 20, the fee changes fall into three categories: across-the-board adjustment of approximately 7.5%; adjustment of certain front-end fees (filing, search, and some examination fees); and adjustments to specific targeted fees. The 7.5% across-the-board fee does not apply to the filings subject to targeted fees.
The targeted fee increases include a 25% increase in existing fees for AIA trial proceedings. The final rule notes, “The fee increases will better align the fee rates charged to petitioners with the actual costs borne by the USPTO in providing these proceedings.”
In addition, the USPTO created a new $452 fee for requests for Director Review. The final rule notes, “The new fee is part of the agency’s ongoing efforts to formalize the Director Review process developed in response to the Supreme Court’s decision in United States v. Arthrex, Inc. and furthers the USPTO’s goals of promoting innovation through consistent, transparent decision-making and the issuance and maintenance of reliable patents.”
Patent Challengers Can’t Dismiss Fed. Cir. Appeal After Decision
In a precedential decision, the U.S. Court of Appeals for the Federal Circuit recently refused the appellants’ requests to dismiss an appeal after the court had issued a decision on the merits but before issuing a mandate to remand the matter to the Patent Trial and Appeal Board.
K.Mizra LLC owns U.S. Patent No. 8,234,705 for a “system and method for ensuring that a host, e.g., a computer, cannot connect to a protected network and spread harmful viruses throughout the network.” Cisco Systems unsuccessfully challenged certain claims of the ’705 patent in an inter partes proceeding. On August 16, 2024, the Federal Circuit vacated the Board’s decision and remanded the case. Hewlett Packard Enterprise Co. also was an appellant after its own IPR challenging the patent was joined with Cisco’s.
Appellants Cisco and HP both moved for voluntary dismissal of their appeals, noting that the motions were due to settlement and not opposed. The parties did not ask that the Federal Circuit vacate its decision on the obviousness of the ’705 patent.
The Federal Circuit denied the motion to dismiss, citing the rationale of its non-precedential decision in TiVo Inc. v. EchoStar Corp., 429 F. App’x 975, 976 (Fed. Cir. 2011) (en banc) that “granting a motion to dismiss ‘at this stage, days before issuance of a mandate, . . . which would result in a modification or vacatur of our [] judgment, is neither required nor a proper use of the judicial system.’”
“We see no reason to depart from that principle here, especially given Appellants filed their motions days before issuance of a mandate,” the decision continued.
On December 11, HP and K.Mizra jointly moved to terminate the IPR as to HP.
Other recent IPR headlines:
- Supreme Court Skips Review of Patent-Owner Standing Question (Bloomberg Law)
- USPTO Officially Withdraws Terminal Disclaimer Proposal (IP Watchdog)
- Patent Office Director Vidal to Return to Winston & Strawn (Bloomberg Law)
