Petitioner Faulted For Not Preemptively Addressing Fintiv, PTAB Litigation Blog
Visit the PTAB Litigation Blog
On July 17, 2023, the Patent Trial and Appeals Board ("PTAB") exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review petition based on the stature of a related U.S. District Court of Delaware action. See Vector Flow, Inc. v. HID Global Corp., IPR2023-00353, Paper 8 (July 17, 2023). Under §314(a), institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a) (stating “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”) (emphasis added); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). As part of that discretion, the Director may deny a petition based on the stature of a parallel district court action. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 at 5-6, 8 (PTAB March 20, 2020) (precedential) (“Fintiv”).
