A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
CommScope Technologies LLC v. Dali Wireless, Inc., No. IPR2022-01242 (PTAB Feb. 27, 2023) (designated precedential on Feb. 27, 2023). Opinion by Vidal.
The Patent Trial and Appeal Board instituted an IPR and, as part of its analysis, declined to exercise its discretion to deny institution under 35 U.S.C. § 314(a) in view of Fintiv. The Board explained that it declined to exercise its discretion because the Petitioner had presented compelling unpatentability challenges.
Director Vidal sua sponte initiated review to clarify existing guidance on the procedure for analyzing Fintiv and conducting a “compelling merits” analysis.
The Board’s Guidance Memo states that, where the Board “determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” The Director explained that she “intended for PTAB panels to only consider compelling merits if they first determined that Fintiv factors 1–5 favored a discretionary denial.” Here, the Board assessed whether the merits were compelling without having first determined that the other Fintiv factors favor discretionary denial.
The Director thus clarified the approach that the Board should take. She explained that where the Fintiv analysis does not favor discretionary denial of institution, “the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” In contrast, in circumstances where the Fintiv analysis favors discretionary denial, “the Board shall then assess compelling merits.”
Because the Board used a different approach, the Director vacated the institution decision and remanded the proceeding to the Board to revisit its Fintiv analysis. The Director also determined that “the Board did not provide sufficient reasoning to support its conclusion that the merits are compelling.” The Board concluded that the unpatentability challenges were compelling, but in support the Board pointed to its analysis “under the lower § 314 institution standard.” The Director found that approach insufficient and instructed the Board to “provide reasoning to explain and support its determination as to compelling merits sufficient to allow the parties to challenge that finding and sufficient to allow for review of that decision.”