Director imposed limits on Fintiv denials
RICK NEIFELD
The Director issued this memorandum yesterday: Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, Memorandum from Director Vidal to PTAB (6/21/2022).
Here are the guts of the memo:
As explained below, to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability. [Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, Memorandum from Director Vidal to PTAB (6/21/2022).]
... This memorandum also confirms that the precedential import of Fintiv is limited to facts of that case. Namely, Fintiv involved institution of an AIA proceeding with a parallel district court litigation. The plain language of the Fintiv factors is directed to district court litigation and does not apply to parallel U.S. International Trade Commission (ITC) proceedings, as the ITC lacks authority to invalidate a patent and the ITC's invalidity rulings are not binding on the Office or on district courts. [Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, Memorandum from Director Vidal to PTAB (6/21/2022).]
Consistent with Sotera Wireless, Inc.,3 the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB. [Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, Memorandum from Director Vidal to PTAB (6/21/2022).]
...Additionally, when considering the proximity of the district coout's trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.4 [Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, Memoranda from Director Vidal to PTAB (6/21/2022).]
The memo cites 35 U.S.C. 3(a)(2)(A) for the Director's authority to impose her will on PTAB decision. The S.Ct's Arthrex decision tends to support that contention.
Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Mobile/Office: 7034150012
Fax: 15712810045
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