Petitioner Faulted For Not Preemptively Addressin

Petitioner Faulted For Not Preemptively Addressing Fintiv, PTAB Litigation Blog

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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”).

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