PTAB Discretionary Denials: Preparing and Responding to Petitions, Application of the Fintiv Factors

Description

By statute, the PTAB has discretion in deciding which petitions to institute (35 U.S.C. Section 314(a)/ Section 324(a)). Such a determination is, for the most part, non-appealable (35 U.S.C. Section 314(d)/ Section 324(e)). The uptick in PTAB institution denials after Fintiv reversed in 2022 as petitioners gave up grounds in related litigations and the USPTO Director issued new, binding interim guidance addressing the PTAB's approach to discretionary denials of PTAB petitions in cases with related litigation. Director Vidal issued a precedential decision on February 27, 2023, CommScope v. Dali Wireless, IPR2022-01242, Paper No. 23 (PTAB Feb. 27, 2023), outlining the limited circumstances in which a PTAB panel is to engage in the Fintiv compelling merits determination. Then on March 13, 2023, the Federal Circuit issued an opinion in APPLE INC. v. Vidal, No. 22-1249, remanding for consideration of whether PTO guidance on discretionary denials was improper because it was not promulgated through notice-and-comment rulemaking under 5 U.S.C. § 553. Clearly, there are several factors at play in this evolving area of PTAB practice.

Discretionary denials fall in three broad categories: denying institution under 35 U.S.C. Section 314(a) based on a parallel proceeding; denying institution under 35 U.S.C. Section 325(d) if the petition relies on the same or similar prior art/arguments presented during examination; and denying institution under 35 U.S.C. Section 314(a) based on serial petitions. Each category has PTAB related precedential opinions to help guide practitioners: Apple Inc. v. Fintiv Inc. for parallel proceedings; Advanced Bionics L.L.C. v. Med-EL Elektromedizinische Geräte GMBH for Section 325(d); and General Plastic Industries Co. v. Canon Kabushiki Kaisha for serial petitions.

Listen as our authoritative panel of IP attorneys examines the Federal Circuit opinion in Apple v. Fintiv, precedential decisions on all types of discretionary denials, and the recent application of these decisions. The panel will offer guidance for preparing and responding to petitions and strategies for avoiding such denials.