June 24, 2022
The USPTO has issued interim procedures limiting PTAB discretionary denials regarding post-grant proceedings associated with parallel ITC proceedings or litigation in district court.
Director of the United States Patent and Trademark Office (USPTO), Katherine Vidal, recently issued a memorandum providing interim procedures for discretionary denials in post-AIA grant proceedings associated with parallel Board proceedings of International Trade (ITC) or litigation in district courts.
This memorandum provides definitive cases where the Patent Trial and Appeal Board (PTAB) will not at its discretion deny the institution of inter partes examination. (IPR) or Post-Grant Review (PGR). Namely, the PTAB will not refuse establishment (1) when a petition is presented irrefutable proof of non-patentability; (2) where the parallel proceeding takes place in the ICC; and (3) where an applicant stipulates not to pursue in a parallel district court the same grounds or any grounds that could reasonably have been raised before the PTAB. Additionally, the PTAB will no longer take trial dates at face value and will instead consider additional factors such as the median time to trial before the competent district court.
To decide whether to refuse the institution at its discretion, the PTAB relies on the following elements Fintiv The factors:
- Whether the court has granted a stay or there is evidence that a stay may be granted if proceedings are brought
- Proximity of court trial date to PTAB statutory time limit for final written decision
- Investment in the parallel proceeding by the tribunal and the parties
- Overlap between the issues raised in the application and in the parallel proceedings
- If the applicant and the respondent in the parallel proceedings are the same party
- Other circumstances affecting the exercise of discretion by the PTAB, including the merits
After the Fintiv decision set precedent in May 2020, the number of discretionary denials for motions with parallel litigation has exploded. Critics attributed the increase in denials to the PTAB’s overreliance on Fintiv factor two, which was based on unrealistic trial dates primarily in the Western District of Texas. Discretionary denials have since declined to 3% in 2022 since the number peaked in 2020. The memorandum provides clarification on how the PTAB will consider district court trial dates when evaluating Fintiv factor two, to reduce the PTAB’s overreliance on inaccurate and unrealistic trial dates while providing claimants with a more predictable path to cost-effective post-grant proceedings.
Issuance of these interim procedures does not reverse the precedence of the Fintiv factors, but rather, aligns the objectives of the PTAB Fintiv discretionary denial analysis with expected benefits of AIA post-grant procedures – lower litigation costs and improved patent quality.
The new interim procedures are as follows.
MANDATORY PROOF OF NON-PATENTABILITY
If the PTAB determines that the information submitted at the filing stage provides compelling evidence of non-patentability, it will not deny filing of the petition on the basis of Fintiv. The Director of the USPTO notes that this rule is a clarification of Fintiv factor six and is consistent with Congress’ goal of creating a robust and reliable patent system in which the PTAB can review and review prior patent grants.
The PTAB will not in its discretion deny the institution of an IPR or PGR if the petitioner stipulates not to pursue in a parallel district court the same grounds as in the petition or any grounds that could reasonably have been raised in the query. This rule is consistent with soterawhere the Petitioner filed such a stipulation and the PTAB subsequently instituted the IPR. After sotera was designated as precedent, petitions with stipulations increased and were frequently avoided Fintiv denials. Thus, director’s directives commemorate the practice of stipulations as a means of avoiding discretionary denials.
ITC PARALLEL PROCEEDINGS
Fintiv no longer applies to parallel ITC proceedings. The Director highlighted key distinctions between ITC and district courts that make the application of Fintiv inappropriate where there is a corresponding ITC investigation. For example, the language of Fintiv factors are directed to litigation in the district courts, not the ITC. More importantly, the ITC’s invalidity determinations do not have precedent in the PTAB or the US District Courts. As such, the danger of inconsistent decisions between the PTAB and the ITC is minimal.
CONSIDERATION OF TRIAL DATES
Scheduled trial dates are notoriously unreliable. In light of this, the director decided that the PTAB would no longer take trial dates at face value. Instead, when applying Fintiv factor two, the PTAB will take into account the median trial time in the relevant district court. Where such evidence is presented by the petitioner, the PTAB will consider additional district court factors, such as the number of cases before the designated district court judge. This clarification provides that the PTAB can no longer deny compelling and meritorious motions solely on the basis of a scheduled trial date.
Overall, the issuance of these interim procedures effectively limits the instances in which the PTAB can deny the institution of IPRs and PGRs with associated parallel litigation in district courts under Fintiv. This will provide the public with more predictable access to the proven, cost-effective alternative to litigation provided by the AIA. In light of these guidelines, plaintiffs with parallel litigation in the district courts should ensure that sufficient persuasive evidence of unpatentability is presented at the institution stage and, where appropriate, provide a Sotera stipulation to avoid with success Fintiv discretionary refusal.
If you have any questions or would like more information about the issues discussed in this LawFlash, please contact the authors, Dion Bregman (SV) or Katerina Hora Jacobson (SV), or any of the following team lawyers Morgan Lewis post-grant procedures:
Joshua M. Dalton
city of the century
Andrew V. Devkar
C. Erik Hawes
Louis W. Beardell, Jr.
Brent A. Hawkins
Andrew J. Gray IV
Ahren C. Hsu-Hoffman
Michael J. Lyons
Jeffrey G. Killian, Ph.D.
Robert Smyth, Ph.D.
 USPTO Memorandum “Interim Procedure for Discretionary Denials in Post-AIA Grant Proceedings with Concurrent Dispute in District Court” at 2-3.
 Identifier. at 3.
 Apple Inc. v. Fintiv, Inc.IPR2020-00019, Paper 11 (PT AB March 20, 2020) (assigned as precedent May 5, 2020).
 USPTO Executive Summary”Public Opinions on the Discretionary Institution of AIA Procedures” at 4 o’clock; Patent Trial and Appeal Board Parallel Litigation Study at 34 years old.
 Supra note 4.
 Supra rating 1 to 5.
 Identifier. at 4 o’clock.
 Identifier. at 7 O’clock.
 Sotera Wireless, Inc. vs. Masimo Corp., IPR2020-01019, Document 12 (PTAB 1 December 2020)
 Patent Trial and Appeal Board Parallel Litigation Study at 8.
 Supra rating 1 to 7.
 Identifier. at 6.
 Identifier. at 8.