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ARTICLE · 28 FEBRUARY 2022

PTAB Bucks Trend And Institutes IPR, Rejecting Fintiv Argument Based On Parallel ITC Proceeding

Winston Taylor
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The Board instituted an inter partes review against a challenged patent that was asserted in a parallel International Trade Commission (ITC) Section 337 Investigation.

United StatesIntellectual Property
Brian E. Ferguson
Brian E. Ferguson

Volkswagon Group of America, Inc. v. Arigna Technology Ltd., IPR2021-01321, Paper 10 (PTAB Feb. 15, 2022).
Before: Baer, Fenick, and Ahmed

The Board instituted an inter partes review against a challenged patent that was asserted in a parallel International Trade Commission (ITC) Section 337 Investigation. In doing so, the Board rejected Patent Owner's arguments that the Board should exercise its discretion and deny institution under 35 U.S.C. § 314(a).

Central to the Board's analysis was its precedential decision in Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (Fintiv), which identifies a non-exclusive list of factors parties may address when there is a related, parallel court or ITC action to determine whether such action provides a basis for discretionary denial. The factors include:

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