JD Supra

PTAB Strategies and Insights – January 2021: Petitioner’s District Court Stipulation Results in PTAB Trial Institution Under the PTAB’s Fintiv Analysis

In December 2020, the Patent Trial and Appeal Board’s (“PTAB” or “Board”) designated an opinion as precedential (Sotera Wireless, Inc. v. Masimo Corporation),[i] where the Board instituted trial, i.e., did not exercise its discretion to deny institution under 35 U.S.C. § 314(a), after carefully considering the unique facts of a parallel district court proceeding. Specifically, the Board applied the Fintiv factors to ultimately determine that, because Petitioner had filed a stipulation in district court, instituting trial would still preserve the efficiency and integrity of the patent system.

In March 2020, the PTAB set forth six Fintiv factors governing the exercise of its discretion to deny institution of a post-grant proceeding in view of a parallel district court or ITC litigation.[ii] The Fintiv factors aim to preserve the efficiency and integrity of the patent system and require the Board to look at circumstances outside the USPTO when determining whether to deny a PTAB petition.

Source: JD Supra, LLC

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