“I now read this instruction and realize that it can enable a compelling determination of merit. dummy Analysis, that wasn’t my intention. – Directed by Vidal
U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal said yesterday that the June 2022 “Compelling Merits” memo was not intended to supersede the analysis of the Patent Trial Board (PTAB). issued a Precedent Commissioner’s Review Decision clarifying the Apple Inc. vs. Fintiv, Inc.
In IPR2022-01242, the PTAB, without exercising discretion under 35 USC § 314(a), initiated an inter partes review (IPR) and found Vidal’s Interim Procedures for Discretionary Denial”. In that memo, Vidal said the PTAB “does not deny the establishment of an IPR or PGR.” dummy (i) the petition presents compelling evidence of unpatentability; When a request for refusal under (ii) is filed. dummy Based on parallel ITC procedures. (iii) Complainant stipulates not to pursue in a parallel district court the same grounds as the motion, or grounds that may reasonably have been raised in the motion. “
Accordingly, the PTAB in this case refused to exercise its discretion to deny the system, explaining that petitioners had raised compelling patentability issues. However, Vidal sua sponte said that the standard of persuasive merit set forth in the memo is a higher standard than that set by law and that the Board will not be held accountable in determining that a merit is persuasive. We have instituted a Director’s Review to emphasize that we must provide a reason for that. Vidal explained:
“A persuasive merit test avoids potentially conflicting outcomes, avoids wasteful parallel proceedings, protects against patent owner harassment, and enables examination of patents that show sufficiently strong initial merit. It seeks to strike a balance between competing concerns of strengthening the patent system by making the patent system unpatentable. Although it benefits from filing an appeal when it has been filed, it is certification under this higher standard that causes the Commission to reconsider the public interest claim when other considerations exist. It’s just
Uphold any denial. “
Vidal acknowledged responsibility for the board confusion and explained:[a]However, I now read this instruction and realize that it can enable a compelling determination of merit. dummy Analysis, that wasn’t my intention. Instead, Vidal says the board should first: dummy Factors 1 through 5 support voluntary rejections before considering compelling merit criteria. If the Commission finds elements 1-5 in favor of a discretionary refusal, then a persuasive merits analysis is initiated, and if an IPR is initiated on those grounds, the Commission shall You must provide sufficient reasons to allow it to be challenged, and reasons sufficient to allow it to review the Board’s decision.”
In this case, Vidal pointed out, the PTAB only pointed to analysis under Section 314 agency standards and did not provide sufficient justification for its accreditation. She therefore reversed the Board’s decision and was remanded for further consideration. dummy We have explained factors 1 through 5 and instructed the board to provide a reason if we again arrive at a compelling merit analysis. Vidal did not express an opinion on whether the record supports a compelling merit analysis.
