Vidal in Latest Director Review: File Stipulations Early or Deal with Fintiv Denials

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal on September 7 granted sua sponte Director Review and affirmed a Patent Trial and Appeal Board (PTAB) decision denying rehearing of the Board’s decision not to institute a request for inter partes review (IPR) by NXP USA, Inc. The ruling clarified that Sotera-type stipulations submitted after an institution denial cannot serve as a basis for granting rehearing. In the underlying case, the PTAB denied institution of an IPR relating to IMPINJ, Inc.’s U.S. Patent No. 10,776,198 B1 under 35 U.S.C. § 314(a), in view of Apple Inc. v. Fintiv, Inc. Most relevant to Vidal’s Director Review decision, NXP in its rehearing request “submitted a stipulation agreeing that, should trial be instituted in this case, Petitioner will not pursue any grounds based on the [prior art] references relied on in this IPR matter.”Read More