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Patent Trial and Appeal Board

Director Vidal issues a precedential sua sponte Director review decision regarding Fintiv and compelling merits    

CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (February 27, 2023)

This Decision grants sua sponte Director review, vacates the Patent Trial and Appeal Board’s (PTAB or the Board) decision granting institution, and remands for further proceedings. The Decision holds that, when determining whether to institute an America Invents Act (AIA) proceeding where there is parallel district court litigation, Board panels should first assess Fintiv factors 1-5; if that analysis favors discretionary denial, the Board should then engage the compelling merits question. The Decision also holds that the Board did not provide sufficient reasoning to support its conclusion that the merits of the unpatentability challenges are compelling. The Decision states that merely pointing to the analysis under the lower institution standard is insufficient to demonstrate a compelling unpatentability challenge, and the Board must provide reasoning to explain and support its determination as to compelling merits sufficient to allow for review of that decision.  

Learn more about PTAB precedential and informative decisions and the status of Director review requests.

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