PTAB Playbook
Establishing Compelling Merits at the PTAB

Under the PTAB’s Apple v. Fintiv precedential decision, the PTAB may exercise its discretion to deny a post-grant challenge petition when parallel litigation is at an advanced stage and the “Fintiv factors” collectively weigh against instituting trial. USPTO Director Vidal’s June 2022 Guidance Memorandum and the precedential decision in CommScope v. Dali Wireless later provided further guidance that the Board can no longer exercise its discretion to deny institution under Fintiv when a petitioner broadly stipulates to not pursue any invalidity grounds in parallel district court litigation (a “Sotera” stipulation). Absent a Sotera stipulation, when Fintiv factors 1–5 collectively weigh against instituting trial, the petition must provide a “compelling, meritorious challenge” to overcome Fintiv-based discretionary denial. The webinar explored what constitutes a “compelling meritorious challenge” at the PTAB based on our survey of over 450 Decisions on Institution. 

Key Takeaways

Some key highlights from the program include takeaways for both petitioners and patent owners when dealing with this issue:

Petitioners:

• Simplicity is key!
  • In cases where the Board found compelling merits, the Board routinely characterized the petitioner’s arguments as straightforward and clear.
• Look for clear disclosures of all claim elements in art and avoid complicated arguments.
• Avoid complex multi-reference combinations as they are less successful.
  • Anticipation or single-reference obviousness grounds that are clear and persuasive have been found compelling.
• Consider filing an authorized pre-institution reply.

Patent Owners:

• Consider rebutting the merits of the Petition’s grounds.
• Point out unexplained ambiguities, missing claim elements, and reasons to combine.
• Expert testimony with the POPR may help bolster arguments against compelling merits.

For further guidance, contact us directly and watch the On Demand recording of the webinar to learn more about compelling merits.

Note: CLE is not available for On Demand viewing.