Fintiv: Dir. Vidal calls for Fewer Discretionary Denials of Inter Partes Review Petitions

by Dennis Crouch

When Congress handed the Inter Partes Evaluation (IPR) provisions of the AIA, there was some issue that the USPTO may be overwhelmed with IPR petitions that patentees might be abusively harassed by IPR petitions or that IPR petitions might occasionally problematically interfere with ongoing litigation.  A single remedy supplied by Congress was give the USPTO Director discretionary and unreviewable authority to grant or deny IPR petitions.  We know that the PTO Administrators have then handed this authority down to the PTAB who decides the institution petitions.  Far more not long ago, under Dir. Iancu course the PTAB made a extra formalized doctrinal method for denying IPR institution when ongoing parallel litigation is currently perfectly underway.  See, Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential).   Because IPR petitions usually comply with infringement allegations, Fintiv concerns have turn into a typical component of IPR establishment. In general, the PTAB  has been contemplating the pursuing elements:

1. Is the district courtroom litigation stayed or likely to be stayed if the IPR is granted
2. Has the district courtroom set a demo day that is close-in-time to the IPR statutory deadline for a closing created determination
3. Have the district court docket and the events by now created significant expense in the district court continuing
4. Are there substantial overlap amongst issues elevated in the petition and people discovered in the district court proceeding
5. Are the functions to the IPR the identical as those in the parallel litigation
6. Are there other situations that advise the training of discretion in denying the petition — which include thing to consider of the deserves of the petition.

In a modern launch, USPTO Director Vidal has released a established of interim treatments for the PTAB to stick to that rather modify Fintiv–and notably make it fewer very likely that the PTAB will workout discretionary denials.  New procedures:

1. No discretionary denial if the petition presents “compelling evidence of unpatentability.”
2. No discretionary denial if the petitioner stipulates that it will not “pursue in a parallel proceeding the very same grounds or any grounds that could have reasonably been raised right before the PTAB.”  (Can the stipulation be conditional on the grant of the petition?).
3. Fintiv precedent does not use to USITC proceedings.
4. Some courts routinely set early demo dates and then frequently press them back again. And, it appears that at the very least 1 decide (Choose Albright) has been strategically location early demo dates in buy to cause discretionary denial. With that in brain, the PTAB’s thought of trial dates should really take into consideration the median time to demo for the district and potentially other areas of the litigation fairly than basically the unique demo day set by the district court docket.

Go through the memo right here.

As you can see, the substantive alterations all weigh versus discretionary denials.  The memo and other sideline conversations also make crystal clear that  the new manager (Dir. Vidal) does not favor discretionary denials.  I.e., in addition to new procedures, we are also probable to have a various narrowing interpretation of the denial method.