PTAB Playbook: Establishing Compelling Merits at the PTAB

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.

The webinar explored what constitutes a “compelling meritorious challenge” at the PTAB based on our survey of over 450 Decisions on Institution. 

During the program, our speakers discussed:

• 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

Sterne Kessler’s PTAB Playbook focuses on practical strategies to navigate the complexities of post-grant proceedings at the Patent Trial and Appeal Board. Featuring our award-winning PTAB team, our webinar series will share insights on the legal trends and developments affecting patent practice today. Subscribe now to stay up-to-date.