PTAB Issues Updated Fintiv Guidance, PTAB Litigation Blog
Visit the PTAB Litigation Blog
After rescinding the June 2022 guidance regarding Fintiv, the PTAB issued updates to how they will consider discretionary denial issues under Section 314(a) on Monday. The updated guidance states:
On February 28, 2025, the USPTO rescinded the June 21 , 2022 memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Interim Procedure”). The Interim Procedure was intended to provide guidance while the USPTO explored potential rulemaking, but the USPTO did not subsequently propose a final rule addressing the Director’s and, by delegation, the Patent Trial and Appeal Board’s (“Board”) exercise of discretionary institution in an inter partes review (“IPR”) or a post-grant review (“PGR”) in view of a parallel litigation. In the absence of rulemaking, the USPTO rescinded the Interim Procedure to restore policy in this area to the guidance in place before the Interim Procedure, including the Board’s precedential decisions in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (“Fintiv“) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (“Sotera“). This memorandum sets forth additional guidance.
