In the MediaTek v. Daedalus IPRs, there’s been some developments. In one IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected., 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. instituted the challenge over a request from the patent owner for discretionary denial. The APJs carefully went through the Fintiv factors and determined that the petitioner had made a sufficient showing on the merits and that Fintiv did not weigh against institution. In the other, Acting Director Stewart issued a one page order denying institution. It ignores most of the Fintiv factors, other than time to trial and likelihood of stay. It doesn’t touch on the merits at all.
And that’s a problem. Setting aside whether discretionary denial is appropriate, Stewart has failed to comply with the statutory requirements set out in the AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding..
35 U.S.C. § 314(a): Threshold.—
The Director may not authorize an inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.
(Emphasis added.) This is simple enough. It says that the Director must determine—based on information presented in the petition and the patent owner’s response—if there’s a reasonable likelihood that the petitioner would prevail on at least one claim.
Maybe Acting Director Stewart did that. Maybe not. It’s impossible to tell which from her order, which—again—does not discuss the merits at all. But there’s another issue here.
35 U.S.C. § 314(c): Notice.—
The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a)…
And that’s where the new Stewart-ified Fintiv approach falls apart. The Director shall notify the parties of their determination under subsection (a). This order does not.
There’s debate over whether Fintiv-style discretionary denial complies with the statute. (It doesn’t.) There’s debate over whether it is good policy. (It isn’t.) But there’s no debate that, whatever the case may be on discretionary denial, a review on the merits for purposes of the institution decision is mandatory. And this lacks any such thing.
As part of admission to the patent bar, practitioners swear to “observe the laws and rules of practice of the United States Patent and Trademark Office.” Acting Director Stewart never swore that oath—she’s not eligible to be admitted to the patent bar—but as the Acting Director, she should do a better job of abiding by it. And that includes providing petitioners with a decision on the merits—even if that decision is accompanied by a discretionary denial.
