Director Vidal releases Sue Sponte director’s review decision clarifying application of general plastic and further weakening Fintiv practice – Patent

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On August 23, 2022, director Vidal initiated a spontaneously Director reviews decision in two IPRs between Code200 and Bright Data (IPR2022-00861, -00862), which overruled the Board’s denial of Code200’s IPRs as improper tracking requests under General plastics. Specifically, Code200 had previously filed two IPR petitions in 2020 which were denied under Fintiv (that’s to say, without addressing the underlying merits). Then, when a separate IPR petitioner challenged the same patents that Code200 was dealing with, Code200 filed its current set of petitions along with a motion to join. The Board denied the joinder and institution of Code200’s motions because, under General plasticCode200 has previously filed IPR petitions seeking the same claims as the patents at issue (and also would not agree to file a stipulation in its case in the district court agreeing not to raise IPR grounds of Code200 in the litigation in the district court).

The manager “respectfully disagrees[d]with the Council’s analysis. Director Vidal noted that when a previous IPR petition by the same petitioner was discretionarily denied or not assessed on the merits, General plasticfactors 1-3 “only weigh in favor of discretionary denial where there are ‘roadmap’ issues under factor 3 or other issues under factor 2.” In other words, if the petitioner has not gained any tactical advantage through prior Board decisions, such as gaining an understanding of the Board’s view of the claimed prior art, then much of the concern underlying and the justification behind General plastic is leaving. This statement by director Vidal also further weakens
Fintiv practice.

As a reminder and as mentioned in our article of June 23, 2022 (linked here), the Office recently published a note explaining that it will not refuse the institution of a DPI or a PGR under
Fintiv:(1) where a petition presents compelling evidence of non-patentability; (2) where a request for refusal under
Fintiv is based on a parallel procedure of the ITC; or (3) where a petitioner directs not to pursue in a parallel district court the same grounds as those presented in the petition or any grounds that could reasonably have been raised in the petition (that’s to say, a sotera-style stipulation). Now, for IP applicants whose IP rights have been denied under
Fintiv and are still within their one-year statutory filing deadline, or who may be clinging to an IPR petition filed separately with a motion to join as was the case with Code200, Director Vidal’s decision significantly weakens the Board’s ability to close the subsequent request because an inappropriate “follow-up” under General plastic.

Fintiv’s The previous grip on the practice of IPRs continues to diminish under the leadership of Director Vidal.

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