USPTO Rescinds Vidal Memo: Fintiv is Alive!

Shifting Tides in PTAB Practice: Director Review Strengthens Patent Owner Position in Fintiv Analysis in Motorola v. Stellar

In a significant ruling dated March 28, 2025 [https://b902f038-1704-4723-a907-9c784e1f8e3e.usrfiles.com/ugd/b902f0_e2fc6c959c8a44848bcacab45f0362da.pdf], the Acting Director of the USPTO, Coke Morgan Stewart, granted Director Review in four related Inter Partes Review (IPR) proceedings between Motorola Solutions, Inc. and Stellar, LLC. The decision not only vacated the Patent Trial and Appeal Board's (PTAB) institution decision but also denied institution entirely, signaling an important shift in how the USPTO evaluates the interplay between district court litigation and PTAB proceedings. Importantly, the Acting Director changed the calculus regarding Fintiv factors 3 and 4. The opinion rejected the notion that the general burden of patent litigation on district courts should be a factor weighing against discretionary denial. Instead, the focus should be on the specific investment already made in the particular case at hand.  Further, the opinion devalues Soltera stipulations. Overall, the opinion is good for patentees as we can expect fewer IPRs to be instituted.

New Cambridge Mobile PTAB Ruling Highlights Critical IPR Petition Requirements: Consistency Between PTAB and District Court Proceedings

The United States Patent and Trademark Office (USPTO) recently designated a significant Patent Trial and Appeal Board (PTAB) decision as "informative," providing crucial guidance for patent practitioners navigating inter partes review (IPR) proceedings. The decision in Cambridge Mobile Telematics, Inc. v. Sfara, Inc. (IPR2024-00952, Paper 12) emphasizes the importance of consistent claim construction positions across different forums and proper treatment of means-plus-function limitations under 35 U.S.C. §112(f). This newly designated informative decision represents a pivotal development in PTAB practice, particularly for parties involved in parallel litigation in district courts. By denying institution of the IPR petition, the Board has signaled a heightened scrutiny of procedural requirements and sent a clear message about the consequences of taking contradictory positions across different forums. The decision's informative status means that patent practitioners should view it as guidance on recurring issues and Board norms—specifically, the proper handling of means-plus-function claim terms and the importance of consistency between IPR petitions and parallel district court litigation. While not binding precedent, informative decisions provide valuable insights into the Board's thinking and approach to common issues.

PTAB and District Court Litigation Strategies After the Fed. Cir. Kroy v. Groupon Decision

The Federal Circuit’s February 10, 2025 decision in Kroy IP Holdings, LLC v. Groupon, Inc [https://www.cafc.uscourts.gov/opinions-orders/23-1359.OPINION.2-10-2025_2465811.pdf]. fundamentally shifts the interplay between district‑court patent litigation and Patent Trial and Appeal Board (PTAB) inter partes reviews (IPRs). In holding that a PTAB final written decision invalidating certain claims cannot collaterally estop a patentee from later asserting immaterially different claims in district court, the Federal Circuit recalibrated long‑standing assumptions about estoppel, burdens of proof, and claim‑assertion strategy. Patent owners should now reassess how they structure infringement complaints, manage claim portfolios, and engage in parallel PTAB proceedings. In this episode, Angela and Erick discuss practical guidelines including staggered claim assertion strategies and key distinctions from prior rulings. Join us for practical tips for navigating the complexities of post-Kroy patent litigation.

USPTO Rescinds Vidal Memo: Fintiv is Alive!

The USPTO has rescinded the June 21, 2022, memorandum issued by then-Director Kathi Vidal in cases of parallel district court litigation. This marks a return to a more flexible discretionary denial framework that predated the memo, specifically allowing discretionary denial based on efficiency regarding timing of district court trial vs. the PTAB trial date as outlined in Apple Inc. v. Fintiv, Inc. This podcast episode examines the rescission’s implications, the likely effects on PTAB practice, and the broader consequences for patent litigation strategy.