Establishing Compelling Merits at the PTAB

Overview

Under the PTAB’s Apple v. Fintiv precedential decision, the PTAB may exercise its discretion to deny a post-grant challenge petition when parallel litigation is at an advanced stage and the “Fintiv factors” collectively weigh against instituting trial.

USPTO Director Vidal’s June 2022 Guidance Memorandum and the precedential decision in CommScope v. Dali Wireless later provided further guidance that the Board can no longer exercise its discretion to deny institution under Fintiv when a petitioner broadly stipulates to not pursue any invalidity grounds in parallel district court litigation (a “Sotera” stipulation). Absent a Sotera stipulation, when Fintiv factors 1–5 collectively weigh against instituting trial, the petition must provide a “compelling, meritorious challenge” to overcome Fintiv-based discretionary denial.

Join us for our upcoming webinar that will take a deeper dive into what constitutes a “compelling meritorious challenge” at the PTAB based on our survey of over 450 Decisions on Institution. 

During the program, our speakers will discuss:

• Success rates for petitioners relying on compelling merits for institution
• The types of arguments the PTAB found (or did not find) compelling
• How petitioners can present more persuasive compelling merits arguments
• How patent owners can effectively rebut evidence of compelling merits

We will apply for CLE credit for this webinar. Attendees will be able to provide their state and bar number information at the conclusion of each webinar.

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