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ARTICLE · 09 JUNE 2023

USPTO Director: Invalidity Judgment By District Court Does Not Foreclose Inter Partes Review

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In a sua sponte review, USPTO Director Kathy Vidal continued her refinement of the PTAB's "discretionary denial" practice. Specifically, the Director vacated the Board's decision...

United StatesIntellectual Property
Andy Rosbrook
Andy Rosbrook
Rubén Muñoz
Rubén Muñoz
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In a sua sponte review, USPTO Director Kathy Vidal continued her refinement of the PTAB's "discretionary denial" practice. Specifically, the Director vacated the Board's decision to deny institution in Volvo Penta of the Americas, LLC v. Brunswick Corp. (IPR2022-01424). In doing so, the Director clarified the PTAB's statutory authority to institute an IPR and affirmed that the discretionary denial factors set out in Apple Inc. v. Fintiv, Inc. also apply when an invalidated patent is still on appeal.

In Volvo Penta, an inter partes review petition was filed while the same patent was asserted in a co-pending district court lawsuit. After the petition was filed, the district court held that the sole asserted patent claim was invalid under 35 U.S.C. § 101 and dismissed the case.

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