In 2023, Fintiv the precedential Order issued in 2020 that established a six-factor framework that the Patent Trial and Appeal Board (PTAB) applies when evaluating whether to exercise.
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USPTO proposed a variety of changes to the pre-institution requirements and briefing process for post-grant proceedings intended to provide clarity and curb abusive litigation tactics. The deadline for submitting comments and suggestions related to these rules is June 20, 2023.
On April 30, 2021, Facebook, Inc. (“Petitioner”) filed a pair of Petitions to institute
inter partes review of certain claims of U.S. Patent No. 8,645,300 (“300 Patent”), owned by USC IP Partnership, L.P. (“Patent Owner”) and directed towards a system for determining a website visitor’s intent and proposing further webpages for that visitor. (Decision at 3). At the time of the filings, a parallel District Court proceeding concerning the ‘300 Patent was set to begin in December of 2021 – over five months before the earliest date the Board expected to issue its decision.
See USC IP Partnership, L.P. v. Facebook, Inc., 6:20-cv-555 (W.D. Tex.) (“District Court proceeding”).