Last week marked the first time that USPTO Director Vidal acted under the Revised Interim Director Review Process to order a Delegated Rehearing Panel to review a decision denying institution of inter partes review (IPR). In July, the USPTO established a Delegated Rehearing Panel process by which the Director may delegate for further consideration Director Review requests of Institution Decisions and Final Written Decisions. Last week, she did just that in DK Crown Holdings Inc. v. Diogenes Limited, IPR2023-00268, Paper 11 at 2 (PTAB Aug. 8, 2023).

The Board issued its initial decision denying institution of IPR in August. Id., Paper 9 at 21. In September, DK attorneys requested Director Review. Id., Paper 10 at 2. They argued that the majority decision was an abuse of discretion because the Board (1) improperly imported claim limitations to avoid prior art; (2) construed claim language more narrowly than a dependent claim; and (3) characterized the prior art inaccurately or contrary to its disclosure. Id.

After reviewing the record, Director Vidal determined that "the Decision warrants review by an independent Delegated Review Panel ("DRP") to review the fact-intensive issues presented in this case." Id., Paper 11 at 2. She delegated Director Review of the decision to a DRP to "review the case and to determine whether to grant rehearing" by determining "whether the record demonstrates that the Decision misapprehended or overlooked any issue raised in the Director Review request." Id. The Director also indicated that she will not participate in the further analysis, with the DRP independently authorized to issue a decision or remand to the Board for further proceedings. Once the DRP issues its decision or remands, neither party may request further Director Review of the decision or the Board on remand. See Delegated Rehearing Panel § 2.B. However, the Director maintains authority to review any DRP decision on sua sponte Director Review. Id.

The Director's order also instructs the Board to issue an order specifying the members of the DRP for this review. The PTO's guidance indicates that:

The DRP shall be selected from the Chief Judge, Deputy Chief Judge, Vice Chief Judges, and Senior Lead Judges, excluding judges who served on the original Board panel for the case under review or otherwise have a conflict with the case.

See Delegated Rehearing Panel § 2.A. The guidance further states that the paneling of members onto the DRP will follow Standard Operating Procedure 1 (SOP 1).

While the ultimate outcome of this Institution Decision challenge remains uncertain, the Director has now shown a willingness to exercise the authority granted by the new interim Director Review and Delegated Rehearing Panel processes.

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