The Fintiv Factors and Multiple Dependent Claims: Two New PTAB Precedential Decisions | Rothwell, Figg, Ernst & Manbeck, P.C.
The USPTO recently designated CommScope Techs. LLC. v. Dali Wireless, Inc.[1] and Nested Bean, Inc. v. Big Beings Pty Ltd.[2] as precedential PTAB decisions. Both decisions were before the Director of the USPTO, Katherine Vidal. A full list of precedential decisions may be found on the USPTO website.
CommScope Techs. LLC. v. Dali Wireless, Inc. IPR2022-01242, Paper 23 (February 27, 2023)
In CommScope Techs. LLC. v. Dali Wireless, Inc., Director Vidal clarified the analysis the Patent Trial and Appeal Board (“Board”) must undertake when declining to institute an inter partes review (“IPR”) when there is parallel district court litigation. The Board must first address the Fintiv factors 1-5 before assessing the compelling merits.[3] That is, when the Board’s analysis of the Fintiv factors 1-5 favor denying the IPR, the Board shall then address the compelling merits.
Here, Director Vidal found the Board’s Decision flawed for two reasons. First, the Board failed to address the Fintiv factors before analyzing the compelling merits. Second, the Board “did not provide sufficient reasoning to support its conclusion that the merits are compelling.”[4] Instead, the Board merely pointed to a lower standard under 35 U.S.C. § 314 of whether there was a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. This was insufficient to meet the compelling merits test which “seeks to strike a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding wasteful parallel proceedings, protecting against patent owner harassment, and strengthening the patent system by allowing the review of patents challenged with a sufficiently strong initial merits showing of unpatentability.”[5] .
Takeaway: When there is parallel litigation, the Board must address the Fintiv factors and the proper compelling merits test before denying IPR institution.
Nested Bean, Inc. v. Big Beings Pty Ltd., Case IPR2020-01234, Paper 42 (February 24, 2023)
Director Vidal, in Nested Bean, Inc. v. Big Beings Pty Ltd., addressed the patentability of multiple dependent claims when only one of the parent claims is unpatentable. Here, the Board granted institution of IPR with respect to claims 1-18 of U.S. Patent No. 9,179,711. Claims 3-16 were dependent on either claim 1 or 2. In its final written decision, the Board held that claims 2-16 were unpatentable while the Petitioner did not establish by a preponderance of the evidence that claims 1, 17, and 18 were unpatentable.
Ultimately, Director Vidal determined the Board erred in finding that dependent claims 3-16 were unpatentable with respect to claim 1. The language of the fifth paragraph of 35 U.S.C. § 112, 35 U.S.C. § 282, and 37 C.F.R. § 1.75(c), “supports reading the statute to require separate consideration of the patentability of alternative dependencies of a multiple dependent claim.”[6] This was an issue of first impression allowing the USPTO Director to interpret section 112, fifth paragraph in this manner.
Takeaway: Multiple dependent claims must be analyzed in view of each parent claim independently.
[1] PR2022-01242, Paper 23 (February 27, 2023).
[2] Case IPR2020-01234, Paper 42 (February 24, 2023).
[3]The Fintiv factors being: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.
[4] CommScope Techs. LLC. v. Dali Wireless, Inc. IPR2022-01242, Paper 23 (February 27, 2023) at 5.
[5] Id. at 4.
[6] Nested Bean, Inc. v. Big Beings Pty Ltd., Case IPR2020-01234, Paper 42 (February 24, 2023) at page 18.
