Partner Eugene Goryunov co-authored two chapters in Global Legal Insights 2023 Litigation and Dispute Resolution book with Kenneth Adamo, principal in the law office of KRAdamo, discussing Fintiv stipulations in inter partes review proceedings and USA jurisdiction.
Read excerpts of the chapters below:
Fintiv Stipulations in Inter Partes Review Proceedings
During Director Vidal’s predecessor’s tenure, the Patent Trial and Appeal Board (PTAB) increased the use of its inherent discretion to deny institution of trial for reasons wholly unrelated to the merits of the challenge. The discretionary institution policy that caused the most controversy is denial of institution where a co-pending district court litigation or U.S. International Trade Commission (ITC) investigation would reach and rule on the merits of an invalidity challenge before the PTAB.
This policy grew out of Apple Inc. v. Fintiv Inc. where the PTAB articulated six nonexclusive factors relevant to evaluating whether the state of a co-pending proceeding weighs against institution:
- Whether the court granted a stay, or evidence exists that one may be granted if a proceeding is instituted;
- Proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision;
- Investment in the parallel proceeding by the court and the parties;
- Overlap between issues raised in the petition and in the parallel proceeding;
- Whether the Petitioner and the Defendant in the parallel proceeding are the same party; and
- Other circumstances that impact the Board’s exercise of discretion, including the merits.
Efficiency of process
The U.S. legal adjudicatory system is split between Federal and State courts, with certain causes of action statutorily delegated to a particular court system. State courts have “general” jurisdiction over most types of civil cases. Where appropriate, State courts may apply the law of another State, Federal law, or even the law of another country, where required to do so by choice of law principles. Federal courts, on the other hand, are courts of “limited” jurisdiction over two types of cases: those that invoke its “Federal question” jurisdiction over “all civil actions arising under the Constitution, laws, or treaties of the United States”; and those that come to the court pursuant to its “diversity” jurisdiction of cases where the amount in controversy exceeds $75,000 and the dispute is between parties who are “diverse”; that is, citizens of different U.S. States, a citizen of a U.S. State and a citizen or subject of a foreign country, citizens of different States in a case where a citizen or subject of a foreign country is an additional party, or a foreign country as plaintiff and one or more citizens of U.S. States.
