Petitioner Faulted For Not Preemptively Addressing Fintiv, 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 Directorauthorize 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) (“ ”).
Jones Day publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request reprint permission for any of our publications, please use our “Contact Us” form, which can be found on our website at www.jonesday.com. The mailing of this publication is not intended to create, and receipt of it does not constitute, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.