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ARTICLE · 13 MARCH 2023

In Parallel Proceedings, Compelling Merits Matter Last In Fintiv Analysis

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On February 27, 2023, the Director of the United States Patent and Trademark Office ("USPTO") issued a precedential sua sponte Director Review Decision in the Inter Partes Review...

United StatesIntellectual Property
Jeffrey D. Sanok
Jeffrey D. Sanok
Hefeng Su
Hefeng Su

Key Takeaways

  • An AIA proceeding with a parallel district court litigation will be subject to a multi-step Fintiv discretionary denial analysis.
  • The PTAB will first conduct an analysis of Fintiv factors 1-5, and then will only consider compelling merits factor 6 when that initial analysis favors denial.

On February 27, 2023, the Director of the United States Patent and Trademark Office ("USPTO") issued a precedential sua sponte Director Review Decision in the Inter Partes Review ("IPR") of Commscope Technologies LLC v. Dali Wireless, Inc. ("Commscope"), IPR2022-01242. The decision vacated the Patent Trial and Appeal Board ("PTAB") decision granting institution of the petition and held that when deciding whether to institute an America Invents Act ("AIA") post-grant proceeding1 with a parallel district court litigation, the PTAB must first conduct Fintiv2 discretionary denial analysis. The PTAB should only consider the compelling merits (or

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