It reduces certainty in patent value which deters innovation.
Giles 6-22-2022. [Robert, Senior VP and Chief Intellectual Property Counsel Qualcomm Incorporated; “Hearing on The Patent Trial and Appeal Board: Examining Proposals to Address Predictability,” US Senate Committee on the Judiciary, https://www.judiciary.senate.gov/imo/media/doc/Testimony%20-%20Giles%20-%202022-06-22.pdf //cpsw-ay]
We support this provision which, much like the provision harmonizing claim construction standards between the PTAB and district courts, is necessary to prevent the gamesmanship that can occur where a challenger chooses to seek the invalidation of a patent at the PTAB rather than federal court because of the lower evidentiary burden. We also believe the stricter "clear and convincing evidence" standard, along with the presumption of validity, provides due deference to the expert determinations made by the USPTO's patent examiners when they make the original decision to award a patent. Patent holders that have invested a substantial amount of money in the process of discovering, developing, and patenting their innovations need the certainty that the decision of the USPTO's patent examiners in the first instance have some meaning.
If the PTAB is permitted to wholly disregard a patent examiner's finding and essentially engage in de novo review each time a patent is challenged, the reliability of a patent granted by the USPTO is significantly reduced. This deprives patent owners the ability to accurately gauge the validity of a patent that has been issued, but not litigated, and thus creates uncertainty.