Recent decisions at the PTAB shed new light on an issue practitioners have not faced for over two and a half years: Fintiv analysis for ITC investigations.
On June 21, 2022, the USPTO issued a guidance memorandum entitled "Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation" ("2022 Fitniv Memo"). The 2022 Fintiv Memo instructed that "[t]he PTAB will not discretionarily deny petitions based on applying Fintiv to a parallel ITC proceeding." 2022 Fintiv Memo at 6. The 2022 Fintiv Memo further explained "the ITC lacks authority to invalidate a patent and its invalidity rulings are not binding on either the Office or a district court." Id. at 6. Accordingly, at the time the Board felt discretionary denial was inappropriate because "an ITC determination cannot conclusively resolve an assertion of patent invalidity" and therefore "denying institution because of a parallel ITC investigation will not necessarily minimize potential conflicts between PTAB proceedings and district court litigation." Id. at 6–7.
This changed on February 28, 2025, when the USPTO rescinded the 2022 Fintiv Memo, later issuing a new memorandum explaining the impact of this decision, entitled "Guidance on USPTO's Recission of 'Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation'" ("2025 Fintiv Memo"). The 2025 Fintiv Memo explains that once again "the Board will apply the Fintiv factors when there is a parallel proceeding at the International Trade Commission ('ITC')." 2025 Memo at 2.
POSCO Shifts Emphasis from Factor One to Factor Four
Since the 2022 Fintiv Memo's rescission, the POSCO decision is one of the first to address discretionary denial in the context of both a parallel ITC investigation and a parallel district court action. POSCO Co., Ltd. v. Arcelormittal, IPR2024-01376, Paper 11 at 3 (P.T.A.B. March 18, 2025).
POSCO grapples with how to weigh a "district court's stay pending [an] ITC investigation" and a competing "lack of a stay in the ITC investigation itself." Id. at 13. Stays are considered under Fintiv factor one, which asks "whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted." Id. at 12. However, in POSCO, as in most ITC investigations, there were two parallel proceedings: one in the ITC (not stayed), and one in district court (stayed).
The POSCO decision reasons that in this situation "factor one, by itself, is neutral," but instead "elevates the importance of factor four." Id. at 13. This is because the "overlap" of "patentability disputes" in the ITC tells you whether the district court stay in truth "allays concerns about inefficiency." Id. If there is a large overlap, the district court stay will not effectively promote efficiency because the PTAB is duplicating the work of the ITC. If the patentability disputes in the ITC and PTAB do not share large overlap, then institution promotes efficiency because it will resolve issues for the District Court.
Turning to factor four, POSCO found that Fintiv factor four "weighs heavily against discretionary denial" because the "Petition's invalidity grounds were [not] presented to the ITC for consideration on the merits," but rather the art was only discussed as "State of the Art" evidence. Id. at 16. Accordingly, the ITC investigation would not "resolve key issues in the petition," so Factor 4, elevated in importance by Factor 1, counseled against denial. Id. at 16.
POSCO Has Been Applied in Other Cases, But Not All
At least four Board decisions have since cited POSCO or applied similar reasoning in deciding Fintiv discretionary denial issues where parallel ITC investigations exist. Three cases have applied POSCO to similarly find the lack of overlap between the IPR and ITC proceedings supported institution. See, e.g., Samsung Elects. Co., Ltd., v. Sionyx, LLC, IPR2024-01431, Paper 21 at 13 (P.T.A.B. April 10, 2025) (instituted); Klein Tools, Inc., v. Milwaukee Electric Tool Corp. & Keter Home and Garden Prods., Ltd., IPR2024-01400, Paper 17 at 14-15 (P.T.A.B. April 8, 2025) (instituted); Klein Tools, Inc., v. Milwaukee Electric Tool Corp. & Keter Home and Garden Products, Ltd., IPR2024-01401, Paper 16 at 15-16 (P.T.A.B. April 8, 2025) (instituted). On the other hand, the Arashi Board panel considered POSCO (and Klein Tools), but determined the overlap between the grounds presented in the IPR petition and ITC investigation was greater, warranting discretionary denial under Fintiv. Arashi Vision (US) LLC v. GoPro, Inc., IPR2025-00017, Paper 11 at 11–13 (P.T.A.B. April 28, 2025).
Not every institution decision involving copending ITC investigations since POSCO has used its reasoning, however. See, e.g., Eunsung Glob. Corp. v. HydraFacial LLC, IPR2024-01491, Paper 17 at 3 (P.T.A.B. April 11, 2025). For example, in Eunsung, "the district court ha[d] stayed its proceedings until the conclusion of the ITC proceeding and any appeal" and "the ITC proceeding was stayed as to Petitioner prior to their termination from the case," but "the ITC proceeding [was] not stayed as to the remaining parties and a stay ha[d] not been requested." Id. at 11. Unlike POSCO, Eunsung concludes that "despite the stay of the district court litigation, [] factor [one] weighs in favor of exercising discretion to deny institution" without shifting the weight to factor four. Id.
ITC Practitioners Should Keep an Eye on POSCO
It remains to be seen how the Director resolves the issues presented in POSCO, which is currently up for director review. See POSCO, IPR2024-01376, Paper 13 (P.T.A.B. April 1, 2025). But given that the new bifurcated procedures put all discretionary denial decisions in the Director's hands going forward, this decision is one to watch. Whether it is affirmed or modified, it should help petitioners and patent owners in the ITC understand how Fintiv will be applied in the future.
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