Fintiv Does Not Apply To Remanded Decisions

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In this decision on remand from the Federal Circuit, patent owner moved to terminate the proceeding because, among other reasons, a parallel district court litigation had proceeded...

United States Intellectual Property

Louis L. Campbell,Eimeric Reig-Plessis,Robert Nai-Shu Kang

+3 Authors

Samsung Electronics America, Inc. v. Prisua Engineering Corp., IPR2017-01188, Paper 86 (PTAB Jan. 14, 2021).
Before: Parvis, White, McMillin.

In this decision on remand from the Federal Circuit, patent owner moved to terminate the proceeding because, among other reasons, a parallel district court litigation had proceeded to a jury verdict upholding the validity of the challenged patent. The patent owner argued that moving forward with this proceeding would frustrate the purpose of providing an efficient substitute for resolution of validity issues announced in precedential decisions like NHK Spring and Fintiv.

The Board denied the motion because once instituted, a petitioner is entitled to a final written decision. Since the instant proceeding had already been instituted, NHK Spring and Fintiv did not apply. In addition, the Board denied the motion to terminate because the parallel district court litigation was presently stayed pending resolution of the IPR proceeding.

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