In POSCO Co., Ltd. v. Arcelormittal, IPR2025-00370, -00371, Paper 10 (PTAB Jun. 25, 2025), Acting USPTO Director Coke Morgan Stewart (Acting Director) referred both IPRs for institution because of the Petitioner'ssettled expectations—the Petitioner had previously invalidated all claims of a parent of the challenged patents. This was despite multiple Fintiv considerations the Acting Director stated counseled for Discretionary denial.
Considerations Counseling for Discretionary Denial
The Acting Director identified two considerations that she stated favor discretionary denial.
First, the challenged patent was involved in a parallel ITC investigation. The Director noted that it was "unlikely that a final written decision in these proceeding[s] will issue before the conclusion of the ITC investigation." In fact, approximately nine months was projected to pass between the expected conclusion of the ITC investigation and the final written decision issue date: the ITC target date was October 23, 2025, while the final written decision was expected on July 30, 2026.
Second, the Director found "substantial investment by the parties in the ITC proceeding." The evidentiary hearing in the ITC investigation had concluded, and the parties had already completed post-hearing briefing for the investigation.
Considerations Counseling Against Discretionary Denial
However, two additional considerations outweighed these other considerations, counseling against discretionary denial.
First, the Acting Director found that the "Petitioner is not a party in the ITC investigation." Instead, Petitioner's customer, who was listed as a real party-in-interest in the Petition, was the actual party in the ITC proceeding.
Second, and most importantly, the Petitioner's arguments regarding its own settled expectations "tip[ped] the balance against discretionary denial." The Petitioner had previously invalidated all claims of the parent of both challenged patents in an IPR that concluded before the challenged patents issued. As such, the Petitioner properly expected the claims were "highly vulnerable to invalidation based on prior art." The Director highlighted that "[i]t is an appropriate use of Office resources to provide consistency and predictability to the public, and to ensure that a patent applicant or owner does not take action inconsistent with the judgment in a prior Office proceeding."
Unique Facts Can Outweigh Strong Fintiv Considerations
Parties should pay careful attention to the specific facts of their case. Even where there is a large difference between the end of the parallel litigation and the final written decision, other facts can still outweigh Fintiv and counsel referral. Petitioners should in particular look for previous errors by the Office, like the issuance of related patents after a parent was invalidated. And Patent Owners should pay careful attention to the full family of their patents and anticipate parental issues in their discretionary denial briefing.
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