Director Vidal is reshaping the rules for discretionary denials of Inter Partes Review (“IPRs”) at the Patent Trials and Appeals Board (“PTAB”). The Director’s most recent decision in AviaGames v. Skillz Platform, Inc., IPR2022-00530, comes on the heels of her decision in CommScope Tech. v. Dali Wireless, Inc., IPR2022-01242. In AviaGames, the Director articulates a new discretionary denial standard for IPRs where the patent has been ruled invalid under 35 U.S.C. § 101 in the parallel District Court litigation. (For a detailed discussion of CommScope see our previous post: Discretionary Denials under Fintiv Rebooted by Vidal’s Decision: | Volpe Koenig (vklaw.com).)
AviaGames holds that, when there is a District Court decision invalidating a patent under §101, the PTAB should use its discretion to deny an IPR unless the Petition presents a compelling case of unpatentability. AviaGames overrules earlier decisions, such as Snap, Inc. v. Sanderling Management Ltd., IPR2021-00781 and Wyze Labs, Inc. v. Sensormatic Elecs., LLC, IPR2020-01486, which found that discretionary denials were not appropriate where the patent had been ruled invalid by the District Court under § 101, because the PTAB's effort assessing validity under 35 U.S.C. §§ 102, 103 would not be duplicative of the District Court's assessment of validity under § 101.
In AviaGames, the Panel originally hearing the case issued a Decision denying institution of the IPR, reasoning that it would be inefficient to spend the PTAB's resources evaluating a patent that had been found invalid in the District Court. The Director did not disagree with this reasoning, but said that efficiency concerns are not enough to deny institution where the “compelling merits test” is met. So the Director remanded the case so that the Panel could determine whether the compelling merits test was satisfied. The Director based her ruling, at least in part, on the concern that, if the district court ruling invalidating the patent under §101 were reversed on appeal, the Petitioner would be barred by the passage of time under 35 U.S.C. § 315(b) from bringing a new IPR challenge at that time.
The Director’s ruling in AviaGames further reiterates her holding in CommScope that the “compelling merits” test must specifically be addressed even when the other factors favor a discretionary denial. One consequence of AviaGames is that in instances where the "compelling merits test" is met and the district court ruling invalidating the patent under §101 is affirmed on appeal, both parties and the Board will spend considerable time and resources on an IPR proceeding that will ultimately be moot.
- Shareholder
Brandon is a technology-first patent attorney with extensive experience in the complete patent lifecycle, from prosecution before the U.S. Patent and Trademark Office through monetization and post grant challenges.
In his ...
- Shareholder
Dan Golub offers clients deep domestic and international legal experience spanning global patent strategy, protection, licensing, and litigation. He effectively translates complex legal issues to business leaders ...
Subscribe
Recent Posts
- Artificial Ingenuity: Is Generative AI the New 'Person of Ordinary Skill' in Patent Law?
- The Expiration of the After Final Consideration Pilot Program 2.0 (AFCP 2.0)
- Patently Unclear: Why Result-Oriented Claims Don’t Make the Cut Under 35 U.S.C. § 101
- Make Your Invention The Priority, What Track-1 Can Do For You!
- Navigating Final Rejections in Patent Prosecution: AFCP 2.0 vs. 37 CFR § 1.116
- A Clear POV on Patent Eligibility Under 35 U.S.C. 101: Contour’s Claims Zoom Back Into Focus in Contour v. GoPro
- Understanding the Recent Federal Circuit Decision in Broadband iTV, Inc. v. Amazon.com, Inc. on Patent Ineligibility
- Federal Circuit Clarifies Obviousness-Type Double Patenting in Allergan v. MSN Laboratories: The Impact of Patent Term Adjustments on First-Filed Patents
- The Risks and Rewards of Using Open Source Software
- Don't Let Your Trade Secrets Walk Out the Door With Your Employees: Patent Them!
Archives
- November 2024
- September 2024
- August 2024
- June 2024
- May 2024
- April 2024
- February 2024
- January 2024
- December 2023
- November 2023
- October 2023
- September 2023
- August 2023
- July 2023
- May 2023
- April 2023
- March 2023
- February 2023
- January 2023
- October 2022
- August 2022
- June 2022
- May 2022
- April 2022
- March 2022
- February 2022
- January 2022
- December 2021
- November 2021
- October 2021
- September 2021
- August 2021
- July 2021
- June 2021
- May 2021
- April 2021
- March 2021
- February 2021
- January 2021
- December 2020
- November 2020
- October 2020
- August 2020
- July 2020
- June 2020
- May 2020
- April 2020
- March 2020
- February 2020
- January 2020
- November 2019
- October 2019
- September 2019
- June 2019
- April 2019
- February 2019
- January 2019
- October 2018
- July 2018
- June 2018
- May 2018
- April 2018
- March 2018
- February 2018
- January 2018
- December 2017
- November 2017
- October 2017
- August 2017
- July 2017
- May 2017
- April 2017
- March 2017
- February 2017
- January 2017