“Statement of both directors CommScope and Avia Games It seems like a useful explanation that the standards for “compelling merit” determinations are higher than for regular institutions. But in practice it is still confusing. ”
Kathi Vidal, Director of the United States Patent and Trademark Office (USPTO), is in tears these days. spontaneously Numerous Patent Trial Board (PTAB) decisions and other precedent designations. Many of these decisions helped make the American Invents Act (AIA) process more rigorous and fair. For example, the Director’s decision amends her PTAB, which relies on concluding expert statements, to have at least some impact on actual stakeholder requirements.her recent intervention Commscope Technologies v. Dali Wireless IPR2022-01242 and AviaGames, Inc. vs Skillz Platform,Ltd, However, IPR2022-00530 is more confusing than clear. dummy Analysis, and work for more parties and boards, without improving fairness or efficiency.
‘Compelling Merit’ Confusion Continues
apple vs fintib Asked a panel of Administrative Patent Judges (APJ) to consider the efficiency and fairness of running parallel district court and PTAB proceedings (summarized in five elements) with other relevant facts (sixth catch-all element). Instruct them to compare. . of CommScopethe Board initiated an inter partes review (IPR), dummyThis is because the panel stated that “Complainant presents a compelling non-patentability challenge.” In support of this conclusion, the Panel pointed to the petition’s usual merits analysis. The Director then intervened, revoking the agency’s decision and instructing the Board to reconsider its decision. dummy analysis.
First, the director’s CommScope The opinion accused the board of jumping on “compelling merits” without first addressing efficiency and fairness factors. The Director also criticized the Board’s “persuasive merit” analysis, directing:[m]Merely pointing to its analysis under the lower institutional standards is insufficient to show that the petition presents a compelling unpatentable challenge. ” dummy cause.
under CommScopethe panel seems to be supposed to analyze the efficiency and equity factors first, and only proceed to the “persuasive merit” factors if they are against the system. ” At the merit stage, the Board must apply higher standards than those required by the scheme.
Avia Games similar. There, the district court found the patent invalid under section 101, and the PTAB panel denied enforcement under section 101 because the patent had already been found invalid. dummyThe Commissioner reversed the Panel’s decision. She instructed her APJ to conduct a “persuasive merit” analysis and initiate a trial if the petition’s merits were “compelling.”
more work, little effect
CommScope and Avia Games More uncertainty, more work for IPR practitioners and PTABs, but little else. beginning, CommScope‘s need to analyze fintib’s The fairness and efficiency factors don’t seem to achieve anything.under supervision dummy According to the guidance, a “persuasive” merit determination “by itself indicates that the PTAB must not arbitrarily deny the scheme. dummyThus, no matter how the efficiency factors become apparent, the guidance directs panels to initiate proceedings when there are “compelling” cases on the merits. Because “persuasive” merit renders the fairness and efficiency factors irrelevant, it is not clear under the Guidance what the panel will achieve by analyzing these factors. Courts usually skip issues that don’t affect the outcome, and so should the PTAB.
Avia Games It is also wasting party and judicial resources. where the patent has already been declared invalid, not yet You may need to continue the Director’s IPR process. The Director argues that the Federal Circuit may overturn the district court and prevent petitioner from resubmitting her IPR if the case is remanded.it seems to justify stop It’s the cost of pending IPR proceedings, not millions of dollars in litigation costs over unresolved issues. Moreover, even if the Court of Appeals for the Federal Circuit vacates, the patent owner is free to raise the issues presented in the petition to the district court. Termination of the IPR does not leave the complainant vulnerable to litigation.
“Persuasive merit” is in the eye of the beholder
Statements from both directors CommScope and Avia Games It seems like a useful explanation that the standard for “compelling merit” determinations is higher than for regular institutions. But in practice it is still confusing.
according to dummy Guidance, the petition must be “persuasive” and “evidence, If not contested in court, clearly leads to the conclusion that one or more of the claims are not patentable.” (emphasis added). The problem is that IPR petitions are unsolicited documents drafted by paid attorneys to invalidate patents.if uncontested Either the petitioner made a mistake or the validity of the patent is so obvious that it is not even in dispute. In other words, the Director’s “compelling merit” guidance Weakest The petition is “persuasive.”
CommScope, the word “persuasive,” and common sense suggest that it was not the Director’s intention. Not very clear. Is there “persuasive” somewhere between clear and convincing evidence and the preponderance of evidence? Is it higher than clear and convincing evidence? The practitioner and her PTAB are not well coached. As a result, the uncertainty of patent litigation increases.
