Insights

On February 27, 2023, the Director of the United States Patent and Trademark Office ("USPTO") issued a precedential sua sponte Director Review Decision in the Inter Partes Review ("IPR") of Commscope Technologies LLC v. Dali Wireless, Inc. ("Commscope"), IPR2022-01242. The decision vacated the Patent Trial and Appeal Board ("PTAB") decision granting institution of the petition and held that when deciding whether to institute an America Invents Act ("AIA") post-grant proceeding[1] with a parallel district court litigation, the PTAB must first conduct Fintiv[2] discretionary denial analysis. The PTAB should only consider the compelling merits (or compelling unpatentability challenges) of Fintiv factor 6 if it determines that Fintiv factors 1-5 favor a discretionary denial.