Tag Archives: Apple v. Fintiv

ITC Section 337: Tips for Avoiding Discretionary Denials at the PTAB

We previously wrote that a co-pending ITC Section 337 investigation virtually guarantees that the Patent Trial and Appeal Board (PTAB) will exercise its discretionary power to deny institution under 35 U.S.C. §§ 314(a) and 324(a) when considering a petition for inter partes review (IPR) or post-grant review (PGR). See ITC Section 337: Kiss of Death … Continue Reading

Discretionary Denial of Institution of an IPR Disfavored Where Litigation Already Stayed or Petitioner Stipulates to Estoppel

In 2020, the PTAB increasingly denied otherwise meritorious petitions for review under its discretionary authority, as my partner Steve Auvil and I recently discussed. Many such denials were made in view of co-pending litigation under the so-called Fintiv factors adopted last May. The reaction to the PTAB’s approach was vocal and divided, and the USPTO … Continue Reading
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