PTAB and district courts use different standards for settling patent claims now.
Hawkins et al. 3-12-2024. Michael Hawkins excels in handling post-grant proceedings at the Patent Trial and Appeal Board. Sangki Park helps companies of all sizes — both in the U.S. and abroad — maximize the value of their intellectual property assets through patent procurement and litigation. Kiersten M. Batzli, Ph.D., focuses her practice on patent prosecution, including drafting and prosecuting U.S. and foreign patent applications. “The Top Three Things Foreign Companies Should Keep in Mind When Considering IPR, " Fish and Richardson, https://www.fr.com/insights/thought-leadership/blogs/the-top-three-things-foreign-companies-should-keep-in-mind-when-considering-ipr/ || 苗
Unlike juries and most District Court judges, the administrative patent judges (APJs) at the PTAB have both technical and legal training along with many years of patent litigation and/or prosecution experience. As such, the APJs can more readily understand the technology at issue and reach decisions related to prior art faster. The parties to IPR proceedings can also make more advanced technical arguments at the PTAB than would be practical in a jury trial.
The burden of proof on patent challengers in PTAB proceedings is more favorable than that of District Court. In District Court, there is a statutory presumption of validity, and each patent claim must be shown to be invalid by 'clear and convincing' evidence. At the PTAB, there is no presumption of validity, and the petitioner need only establish that a claim is unpatentable by a 'preponderance of the evidence' -- a much lower standard than 'clear and convincing' evidence.
For a foreign company thrust into patent litigation in the U.S., the parallel paths of District Court and PTAB proceedings are often necessary to achieve a company's goals toward settlement leverage, early termination or stay of the litigation, and heightened technical fluency in assessing the prior art.