PTO Director Vidal Issues Interim Procedure Regarding Discretionary Denials Under Fintiv

On June 21, 2022, PTO Director Katherine Vidal issued a memorandum setting forth her interim procedure for discretionary denials in AIA post-grant proceedings with parallel district court litigation, found here ("Memo"). The interim procedures, which go into effect immediately, should eliminate the uncertainty that many IPR petitioners currently face regarding whether the PTAB will consider their petitions on the merits, or exercise its discretion under 35 U.S.C. § 314(a) to deny them because of parallel litigation involving the patent in question.

As background, in 2020 the PTAB designated as precedential its 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 proceeding involving the patent to determine whether such proceeding provides a basis for the PTAB to discretionarily deny institution of an IPR