Trial Practice Guidance, Inter Partes Review (IPR) Proceeding, §314(a)

Jones Day’s Fintiv-ITC Developments Tracker

Jones Day on 1/25/2021

Although first briefly mentioned as a possibility in the August 2018 Trial Practice Guide Update (page 10), outside of one instance (Bio-Rad Labs. v. 10X Genomics, IPR2019-00567; -00568, August 8, 2019), PTAB discretionary...more

Agreement Not to Raise Duplicative Arguments in District Court Key to Avoiding Discretionary Denial of IPR Petition

Akin Gump Strauss Hauer & Feld LLP on 12/23/2020

In the last two years, the Patent Trial and Appeal Board has issued two precedential decisions (in NHK and Fintiv) that set forth the board’s test for determining whether to deny an inter partes review (IPR) petition based on...more

Fintiv Is the New Nhk Springs: New Informative Decisions Sharpen the PTAB’s Focus on Discretionary Denials and Provide Guideposts...

Knobbe Martens on 8/26/2020

The PTAB has been grappling with how to manage IPR petitions for patents that are also being challenged in federal district court, particularly when the district court is set to determine the patent validity prior to the...more

Focus on Fintiv Factor Four

Jones Day on 7/22/2020

In its precedential decision in Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), the PTAB set forth a six factor “holistic” test for balancing considerations of system efficiency, fairness, and...more

PTAB Provides More Guidance on IPR Institution Discretion Under § 314(a)

Bass, Berry & Sims PLC on 7/22/2020

On July 13, the USPTO’s Patent Trial and Appeal Board (PTAB or Board) designated two decisions informative that apply the NHK factors for determining whether the PTAB will exercise its discretion to deny inter partes review...more

IPR and Fast-Moving District Court Litigation: PTAB Formalizes the Analysis for Balancing Efficiency and Fairness

Mintz - Intellectual Property Viewpoints on 7/20/2020

The Patent Trial and Appeal Board (“PTAB”) has designated two key institution decisions as “Informative.” With these informative decisions, the PTAB has provided guidance on how the PTAB will apply efficiency and fairness...more

PTAB Designates as Precedential a Decision on the PTAB’s Discretion to Deny Institution of an IPR Based on a Parallel District...

Akin Gump Strauss Hauer & Feld LLP on 6/1/2020

The Patent Trial and Appeal Board (PTAB) recently designated an order, Apple Inc. v. Fintiv, Inc., IPR 2020-00019, Paper 11 (Mar. 20, 2020), as precedential. The order outlines six non-dispositive factors the PTAB will...more

Trial Practice Guidance › Inter Partes Review (IPR) Proceeding › §314(a)