The U.S. Patent and Trademark Office issued updated interim guidance on when the Patent Trial and Appeal Board (Board) may deny review of patents based on parallel litigation,1 which should provide clarity on when denials are appropriate. The updated guidance makes several adjustments to how the Board will apply its 2020 precedential decision in Apple Inc. v. Fintiv, Inc.,2 which established the following factors for the Board to consider when deciding whether to use its discretion not to review a patent because of related infringement litigation (“Fintiv factors”):
1. Whether the court granted a stay (or evidence exists that one may be granted if a proceeding is instituted).
2. Proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision.
3. Investment in the parallel proceeding by the court and the parties.
4. Overlap between issues raised in the petition and in the parallel proceeding.
5. Whether the petitioner and the defendant in the parallel proceeding are the same parties.
6. Other circumstances that impact the Board’s exercise of discretion, including the merits.2
When analyzing these factors, the Board considers the totality of the circumstances, performing a holistic assessment of whether its efficiency and integrity are furthered by denying or instituting review.
The updated guidance explains that the Board will not deny institution of an inter partes review (or post-grant review) under Apple Inc. v. Fintiv Inc. in the following instances:
(i) when a petition presents compelling evidence of unpatentability;
(ii) when a request for denial under Fintiv is based on a parallel U.S. International Trade Commission proceeding; or
(iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.
Additionally, the Board will consider the speed with which the district court case may come to trial and be resolved when considering Fintiv factor 2. The Board will weigh factor 2 against exercising discretion to deny institution if the expected trial date, based on median time-to-trial statistics, is around the same time as or after the statutory deadline for the Board’s final written decision.
This updated guidance applies to all proceedings pending before the Patent Office until further notice. The Patent Office expects to replace this interim guidance with rules after it has completed formal rulemaking.
Why it matters:
The Board continues to clarify practice associated with instituting contested proceedings. The guidance will remain in effect while the Patent Office implements the formal rulemaking process. The updated guidance clarifies that when evaluating how fast a case will reach trial, the Board will use the median time-to-trial statistics assembled by the Administrative Office of the U.S. Courts as opposed to the trial date set by the judge in the case, which often changes.
The guidance should allow the parties to spend less time on Fintiv issues, including the statement that petitions will not be denied under Fintiv when a petitioner files a stipulation agreeing not to pursue in court the same invalidity grounds raised at the Board or any other grounds that reasonably could have been raised.
Irah Donner is a partner in Manatt’s Intellectual Property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation (June 21, 2022).
2 Apple Inc. v. Fintiv, Inc., IPR2020-00019, slip op. at 5–6, 2020 WL 2126495, Paper 11 (P.T.A.B. March 20, 2020 (precedential)). See additional description here: https://www.manatt.com/insights/newsletters/intellectual-property-law/board-designates-two-decisions-precedential-app.