Vidal Memo Clarifying PTAB Discretionary Denial Analysis Says Fintiv Does Not Apply to Parallel ITC Investigations

The memorandum issued by U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal, "Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation," provides updated guidance on discretionary denials at the Patent Trial and Appeal Board (PTAB). The guidance outlines that the PTAB will not consider Fintiv factors to discretionarily deny institution for inter partes reviews (IPRs) or post-grant reviews (PGRs). IPWatchdog interviewed Finnegan partner Josh Goldberg to discuss the USPTO's guidance. 

Josh explained that the guidance provides clarity in various areas in which the PTAB took varying positions in the past, stating, “The ITC [International Trade Commission] is a good example of this. This is the first time to my knowledge that the PTAB as a whole will be taking the position [that parallel ITC proceedings are excluded from the Fintiv analysis].”

The memo also added that the PTAB will not discretionarily deny institution if there is compelling evidence of patentability in the petition. Josh added that this portion of the guidance is interesting in the context of PGR, since “the test is very similar to the general standard for PGR” and no longer considers Fintiv.  He explained that the standard for PGR is “whether the petition demonstrates that it is ‘more likely than not’ that at least one of the claims challenged in the petition is unpatentable.”

Josh concluded that the guidance will be useful for both parties in PTAB trials, stating, “I have a pretty split practice [between patent owners and petitioners], and for both sides it’s been a struggle as far as wondering what a particular panel is going to look at – the clarity [the memo] has brought is the key here; you know how to act.”

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