As the Senate Judiciary Committee gets ready to consider PREVAIL, which would restrict access to inter partes review, a decision out of the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. illustrates why PREVAIL is unneeded.
Earlier this month, the Patent Trial and Appeal Board doubled down on their earlier decision to deny patent validity challenges brought by Honda Motor Co., General Motors LLC, Nissan North America Inc, and Ford Motor Co. This time they denied review on the merits rather than relying on discretionary factors. The patent, held by Neo Wireless, involves a type of 4G wireless technology used by the car manufacturers. Review of the patent was discretionarily denied by the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. back in December because the companies were thought to have had a “significant relationship” with Volkswagen AG, which had previously challenged the same patent.
The initial decision to deny review came from the Valve precedent, a 2019 PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. decision that determined that a review could be denied regardless of the quality of the patent, including if – as was determined in this case – the two petitioners are found to have a “significant relationship.”
In March, however, the USPTOUnited States Patent and Trademark Office. See also PTO. Director Kathi Vidal vacated the denial decision, explaining that the board should not have ruled that Honda and Volkswagen had a “significant relationship” that warranted denying review. As Vidal explained, “there is no evidence that they had any interactions or agreements regarding the accused wireless standard or the accused products.” Director Vidal ultimately sent the case back to the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. because they failed to consider the merits of Honda’s invalidity positions.
In the most recent chapter of this saga, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. ruled that Honda’s petition did not warrant instituting a review based on the challenge’s merits, explaining that the, “Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any [claims of the] patent under any of its proffered challenges… For the reasons given, it is hereby ordered that the petition is denied.” Once questions of discretionary denial were put aside, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. still did not institute review because the patent withstood scrutiny. In the end, the patent owner had nothing to gain from a discretionary denial because of their patent’s quality—in fact, it wound up costing them more money as they litigated the discretionary denial.
This case demonstrates the inherent illogic of discretionary denials. Advocates for discretionary denials argue that they are necessary in order for patent owners to avoid repeat validity challenges. As shown in this case, even when discretionary denials are taken off the table, owners of novel, useful, nonobvious patents have nothing to fear from petitions to the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.. Any challenge to those valid patents will not be instituted, nevermind ultimately successful. The only time discretionary denials shield patents are when the patents in question would not otherwise withstand scrutiny on a petition’s merits and have at least reasonable likelihood of being invalid.
The irony is, of course, that those are the patents that most need review.
