In 2020, the Patent Trademark and Appeals Board identified six factors that weigh for or against an institution of proceedings in parallel district court litigation, which the PTAB can consider when deciding whether to use discretion to deny the institution. Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB 2020).

In June 2022, the USPTO issued interim guidance addressing the discretionary denials over post-grant proceedings associated with parallel ITC proceedings or district court litigation. The guidance noted that the PTAB will not rely on the Fintiv factors to discretionarily deny the institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability. Further, the PTAB will not discretionarily reject an institution, given parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.

For those with parallel district court litigation, counsel must ensure sufficient evidence of unpatentability is provided at the institution stage and, if appropriate, provide a Sotera stipulation to avoid Fintiv discretionary denial successfully.

This CLE webinar will examine the USPTO's new Fintiv guidance on discretionary denials. The panel will discuss the implications of the new guidance and provide best practices for addressing discretionary denials.

1. New Fintiv guidance
2. Implications for discretionary denials
3. Sotera stipulations
4. Minimizing the risk of discretionary denials

• What are the implications of the new guidance for discretionary denials?
• Under what circumstances should counsel consider making Sotera stipulations?
• What steps should counsel take to minimize the risk of discretionary denials?