“As instructed in my guidance memo, a compelling and worthwhile challenge proceeds even in the presence of parallel district court litigation.” – Vidal Director Review Decision
U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today issued a second amendment to the Patent Trial and Appeal Board (PTAB) on its approach to the “persuasive merit” analysis outlined in its June 2022 guidance memo. Issued a Director Review decision.
of AviaGames, Inc. vs. Skillz Platform, Inc., In IPR2022-00530, Vidal vacated the PTAB’s denial of AviaGames’ petition to initiate an IPR of certain claims of Skillz’ US Patent 9,479,602 B1. She explained the Board’s decision to dismiss the following petition: Fintive analysis was improperly based on the district court’s invalidity judgment under 35 USC § 101. Because it was “a statutory basis that could not have been raised before the board,” and “ineffective duplication of efforts, the board and the district court.” § 10, the parties are prohibited from filing new IPRs pending a final non-appealable decision.
Vidal pointed to ‘compelling merit’ analysis and guidance notes on her decision Open Sky v. VLSI, she said, both “take a holistic view of whether the efficiency and integrity of the system are best served by rejecting or introducing reviews.” Vidal writes that the board will not deny establishment if it meets the criteria of compelling merit. “Certainly, as directed in my guidance memo, a compelling and worthwhile challenge proceeds even when the district court litigation is proceeding in parallel,” the judgment said. .
Vidal also pointed out her decision earlier this week Commscope Technologies v. Dali Wireless, This attempted to clarify a compelling merit analysis and allowed for unintended confusion for further explanation.
In its decision, Mr. Vidal said the standard of mandatory merit specified in the guidance memo was a higher standard than that set for the scheme by law, and that the board would not consider the merit to be mandatory when determining it. I reiterated that I must provide the reason to the CommScopethe board did not provide sufficient reasons to justify its compelling merits decision, and Vidal instructed it to do so should it reach a compelling merits analysis again. I emptied the case and sent it back.
Similarly, Vidal reminded the PTAB in today’s decision that if the system were to decide on a record before presenting a “compelling and meritorious” challenge, it would need to provide such justification. I was allowed to. If the Board determines that the record does not meet the higher standards, the Board must exercise its discretion to deny registration. If it is found to meet the criteria, it should be enacted.
“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. We aim to strike a balance between competing concerns of strengthening the patent system by making it unpatentable,” Vidal wrote.
She added: Uphold any denial. ”
Vidal also said the IPR would begin on remand and that the regime would end if the nullity decision was upheld on appeal in court.
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Author: Don Scarpo
