Applying Fintiv to a Parallel ITC Investigation

By Sabrina Bellantoni & S. Christian Platt –

The Patent Trial and Appeals Board (“PTAB”) recently denied institution of an inter partes review (“IPR”), exercising its discretion under 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv Inc., IPR2020-00019 (PTAB Mar. 20, 2020) (“Fintiv”), due to a pending International Trade Commission (“ITC”) investigation.  Arashi Vision Inc. (U.S.) LLC d/b/a Insta360 v. GoPro, Inc, IPR2025-00017, Paper 11 (April 28, 2025).

Arashi Vision (U.S.) LLC (d/b/a Insta360), (“Petitioner”), filed a petition requesting an IPR of GoPro, Inc.’s (“Patent Owner”) patent, U.S. Pat. No. 10,529,052 (“the ’052 patent”).  The ’052 patent titled “Virtual Lens Simulation for Video and Photo Cropping,” is directed towards virtual lens simulation when applying a crop or zoom effect to an input video.

At the time of the decision, two related proceedings involved the ’052 patent: (1) In the Matter of Certain Cameras, Camera Systems, and Accessories Used Therewith, Inv. No. 337-TA-1400 (USITC); and (2) GoPro, Inc. v. Arashi Vision Inc. et al., No. 8:24-cv-00681-HDE-JCV (C.D. Cal.).  While the district court proceeding was automatically stayed pursuant to 28 U.S.C. § 1659, the ITC investigation had proceeded through claim construction and evidentiary hearing with the ITC’s initial determination expected by May 8, 2025 and the target date for completion of the investigation is September 8, 2025.

Of note, while Petitioner had agreed to a Sotera stipulation not to pursue in the district court any grounds that could have been raised in the IPR petition, it did not include the ITC proceeding, which had already proceeded through the evidentiary hearing.

The PTAB analyzed “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding,” focusing on the Fintiv factors for the parallel ITC proceeding:

1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision;
3. investment in the parallel proceeding by the court and the parties;
4. overlap between issues raised in the petition and in the parallel proceeding;
5. whether the petitioner and the defendant in the parallel proceeding are the same party; and
6. other circumstances that impact the Board’s exercise of discretion, including the merits.

The PTAB noted that in February 2025, the United States Patent and Trademark Office (“USPTO”) rescinded a memorandum outlining PTAB procedures for discretionary denials in cases with parallel district court litigation.  On March 24, 2025, the Chief Administrative Patent Judge issued Guidance on USPTO’s recission of “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” which provides guidance on applying the Fintiv factors to cases with parallel ITC investigations and is applicable to any case where the PTAB has not yet issued an institution decision.

The PTAB analyzed each Fintiv factor and found that five factors favored discretionary denial.  For factor 1 (evidence regarding a stay), the PTAB found it slightly favored denial because, although not bound by ITC rulings, there is some overlap in the patentability disputes at issue in both forums.  For factor 2 (proximity to trial date), it strongly favored denial since the ITC investigation would conclude seven months before the PTAB’s final written decision.  For factor 3 (parallel proceeding’s investment), it heavily favored denial because the ITC investigation had already taken place with claim construction completed and fully developed invalidity positions.  For factor 4 (overlap of issues), it slightly favored denial since, although the ITC would not adjudicate all twenty claims of the ’052, eight—including both independent claims—overlapped or were substantially similar to those in the ITC proceeding.  Further, the PTAB did not consider the Sotera stipulation because it was worded such that it did not apply to the ITC investigation.  For factor 5 (presence of same parties), it favored denial because the parties were the same in both proceedings.  For factor 6 (other considerations), the PTAB found it neutral, because the petition’s merits were not compelling, and the Patent Owner raised issues warranting further development if instituted.  Additionally, the PTAB did not consider Petitioner’s reliance on the rescinded memorandum or the institution of proceedings on different patents covering similar subject matter, including a petition that contained an overlapping reference from this petition.

Takeaways:

Practitioners should note that USPTO guidance on discretionary denials is interim and may change.  Under the interim guidance, the PTAB may exercise its discretion under 35 U.S.C. § 314(a) to deny institution of an IPR petition when there is a pending ITC investigation, using the Fintiv factors.  A Sotera stipulation may be relevant if it addresses the parallel ITC proceeding, but it only would apply if the IPR is instituted.  Given how quickly ITC investigations proceed, and the PTAB’s focus on the stage of the ITC investigation, potential petitioners should closely evaluate timing issues prior to filing an IPR petition when a co-pending ITC investigation exists.