PTAB Denies Institution of IPRs in Apple v. Haptic

by | May 8, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Carl Kukkonen –

In two recent decisions, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings sought by Apple Inc. against Haptic, Inc. regarding U.S. Patent No. 9,996,738 B2. These decisions—IPR2024-01475 and IPR2024-01476, both issued on April 4, 2025—offer a detailed look at how the Board exercises its discretion under 35 U.S.C. § 314(a), especially in the context of parallel district court litigation. Below, we break down the key aspects of these decisions and what they mean for parties considering IPRs in the shadow of ongoing litigation.

Background: The Patent and the Dispute

The ‘738 patent at the center of these proceedings relates to a manual control system for terminal devices such as televisions, lighting fixtures, thermostats, or laptops. The system features a housing with a sensor that detects gestures on a mounting surface, generating commands for the terminal device based on those gestures. Apple challenged various claims of the patent in two separate IPR petitions, while a parallel infringement lawsuit between the parties was already underway in the Northern District of California (originally filed in the Western District of Texas).

The Fintiv Framework: Six Factors in Focus

Both decisions are rooted in the PTAB’s application of the six-factor framework established in Apple Inc. v. Fintiv, Inc. This framework guides the Board’s discretion to deny institution of IPRs when there is parallel district court litigation. The six factors are:

  1. Whether the district court granted a stay or is likely to grant one if IPR is instituted
  2. Proximity of the district court’s trial date to the PTAB’s projected final written decision
  3. Investment in the parallel proceeding by the court and the parties
  4. Overlap between issues raised in the IPR and the district court
  5. Whether the petitioner and the defendant in the parallel proceeding are the same party
  6. Other circumstances, including the merits of the petition

Key Findings Across Both Decisions

  • Stay of Litigation (Factor 1): The district court had denied Apple’s motion to stay the litigation, albeit without prejudice to renewal if the PTAB instituted review. The Board found this factor neutral, noting the lack of a clear indication that a stay would be granted if IPR were instituted.
  • Proximity of Trial Date (Factor 2): The district court trial was scheduled for September 29, 2025—over six months before the PTAB’s projected deadline for a final written decision (April 10, 2026). Despite Apple’s arguments about potential delays based on median time-to-trial statistics, the Board found the evidence more persuasive that the trial would proceed as scheduled. This factor weighed in favor of discretionary denial.
  • Investment in the Parallel Proceeding (Factor 3): The Board noted significant investment in the district court case, including a completed Markman hearing, a detailed claim construction order, and the near completion of fact discovery and expert reports. This substantial progress weighed in favor of denial.
  • Overlap of Issues (Factor 4): Apple attempted to mitigate concerns of duplicative efforts by stipulating that, if IPR were instituted, it would not pursue in district court any invalidity grounds that were or could have been raised in the IPR. The Board found this broad stipulation weighed strongly against discretionary denial, as it reduced the risk of conflicting decisions and duplicative work.
  • Identity of Parties (Factor 5): The same parties were involved in both the IPRs and the district court litigation, which weighed in favor of denial.
  • Other Circumstances and Merits (Factor 6): The Board found that Apple’s petitions did not present particularly strong merits. Specifically, the Board identified significant weaknesses in Apple’s obviousness arguments, particularly regarding the combination of prior art references. For example, the Board noted that Apple’s proposed combination of Murakoshi and Stewart was undermined by the fact that Stewart taught away from the very approach Apple advocated, and neither reference appeared to teach all the required claim limitations.

Holistic Balancing and the Final Outcome

After weighing all six Fintiv factors, the Board concluded that a holistic assessment favored discretionary denial of institution in both IPR2024-01475 and IPR2024-01476. The advanced stage of the district court litigation, the proximity of the trial date, the significant investment by the court and parties, and the lack of compelling merits in Apple’s petitions all contributed to the Board’s decision.

Implications for Future IPR Filings

These decisions underscore the importance of timing and the state of parallel litigation when considering an IPR petition. Even with broad stipulations to avoid duplicative invalidity arguments, the PTAB may still deny institution if the district court case is well advanced and the merits of the petition are not particularly strong. Petitioners should carefully assess the Fintiv factors and the progress of any related litigation before filing an IPR, as the Board’s discretion under § 314(a) remains a powerful gatekeeping tool.

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Carl Kukkonen

Partner at Jones Day
An acknowledged leader in the profession, Carl Kukkonen has nearly 20 years of experience in strategic intellectual property counseling. He advises clients on patent infringement and validity, preparation and prosecution of patent applications, and brand protection matters.