In June, the Supreme Court issued its opinion in United States v. Arthrex, 141 S. Ct. 1970 (2021), holding that the USPTO Director has the discretion to review decisions rendered by PTAB judges.  In the wake of that decision, the USPTO established a procedure under which parties could request Director review of a PTAB decision.^[1] 

On November 1—just over four months after the Supreme Court’s Arthrex decision—the Acting USPTO Director issued the first decision granting a request for review and vacating and remanding a Final Written Decision by the PTAB.

In Ascend Performance Materials Operations LLC v. Samsung SDI Co., Ltd., IPR2020-00349, Paper No. 57 (Nov. 1, 2021), Samsung petitioned the Director for review, arguing that the PTAB’s final written decision was improper on four grounds, including that the Board did not separately consider two claims of the subject patent, which were entitled to a provisional priority date and thus antedated an asserted prior art reference. 

In a short opinion, the Director granted Samsung’s request on that argument.  The Director emphasized that patent claims are awarded priority on a claim-by-claim basis, and that the PTAB had improperly failed to separately address the two claims that had an earlier priority date.  The Director vacated the PTAB’s decision and directed the PTAB to address (1) whether the two claims were entitled to the provisional priority date, and (2) whether those claims were patentable in view of the record.  The Director denied review as to Samsung’s remaining arguments.

^[1] Further information on this procedure is available at https://www.finnegan.com/en/insights/blogs/at-the-ptab-blog/after-arthrex-uspto-creates-interim-director-review-process.html.