The Patent Trial and Appeal Board (“PTAB”) recently designated as precedential two decisions that apply the Fintiv factors when determining whether to institute an inter partes review (IPR) of a patent involved in parallel U.S. District Court litigation: Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 (PTAB October 21, 2020)(precedential, designated December 17, 2020); and Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 (PTAB December 1, 2020)(precedential, designated December 17, 2020).
The PTAB may consider the advanced state of parallel litigation when determining whether to exercise its discretion to deny institution under § 314(a). These cases provide guidance on how the PTAB applies the Fintiv factors when considering parallel litigation.
The list of Fintiv factors, as set forth in Apple Inc. v. Fintiv, Inc. include:
- 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 PTAB’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 PTAB’s exercise of discretion, including the merits.
Snap, Inc. v. SRK Technology LLC
In Snap, the PTAB instituted an IPR after examining the Fintiv factors. In particular, the PTAB pointed to the fact that the parallel litigation had been stayed. It noted that “the District Court’s stay of the litigation pending denial of institution or a final written decision allays concerns about inefficiency and duplication of efforts.” The District Court stay weighed strongly against the PTAB exercising discretion to deny institution under the first Fintiv factor.
In addition, the PTAB found that the early stages of the parallel litigation prior to the stay, and the lack of overlap between the invalidity contentions in the litigation and the challenges raised in the petition, allayed any concerns regarding inefficiency, duplication of efforts, and the possibility of conflicting decisions.
Sotera Wireless, Inc. v. Masimo Corporation
The PTAB also instituted an IPR in Sotera after taking a “holistic review” of the Fintiv factors. Here the parallel litigation was not stayed, however the fourth Fintiv factor—overlap between issues raised in the petition and in the parallel proceeding—weighed heavily on the PTAB’s institution decision. The PTAB found that there was little risk of overlap because Sotera filed a stipulation in the litigation which stated that if the PTAB were to institute, it “will not pursue in [the District Court] the specific grounds [asserted in the inter partes review], or on any other ground . . . that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications).”
Drawing upon analysis from the case of Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking, the PTAB stated that the “stipulation here mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.”
If you have any questions about these cases or the issues raised therein, please contact Andrew Turner.