If a PTAB panel finds "compelling merits" of unpatentability when making its initial institution decision, is there any realistic chance that same PTAB panel will reach a different result in the final decision at the conclusion of a post-grant proceeding? That question bears considering, as the PTAB has proposed formally adopting a "compelling merits" standard for institution of an IPR or PGR under certain circumstances.
As discussed in prior posts, the USPTO is considering sweeping changes to the handling of post-grant proceedings Among these proposed changes, the USPTO is considering formalizing a "compelling merits" standard to institute an IPR or PGR when the petition would otherwise be subject to the USPTO's discretionary denial guidance. See 88 Fed. Reg. 24503 at 24507.
The PTAB currently analyzes six factors when determining whether to exercise its statutory discretion to deny institution. See Apple Inv. V. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (designated precedential May 5, 2020). The sixth Fintiv factor requires the PTAB panel to consider other circumstances affecting the decision, including the merits of the challenge. Id. The PTAB has relied on this sixth factor to proceed with institution of a proceeding where there was strong evidence of unpatentability, despite other Fintiv factors favoring a discretionary denial. See, e.g., Illumina Inv. V. Trs. Of Columbia Univ., IPR2020-00988, Paper 20 (PTAB Dec. 8, 2020). On June 21, 2022, Director Vidal issued a memorandum clarifying the...
