By Hannah Mehrle and Matt Johnson

The Board exercised discretion under § 314 to deny inter partes review in view of co-pending district court litigation.  In the Institution Decision, the Board evaluated the Fintiv factors in light of the USPTO Director’s June 2022 Interim Procedure for Discretionary Denials.

Fintiv Factor 1 requires consideration of “whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted.”  This factor weighed in favor of the Board exercising its discretion to deny institution because the district court already denied Petitioner’s motion for a stay in light of the advanced stage of the underlying litigation.

Under Fintiv Factor 2, the Board considers the “proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision.”  Both the current trial date and the trial date under time-to-trial statistics for the district were months before the date the final written decision would be due.  Accordingly, this factor favored exercising discretionary denial.

Fintiv Factor 3 requires the Board to consider “investment in the parallel proceeding by the court and the parties.”  The district court already issued a claim construction order.  Also, at the time of institution, opening validity expert reports were served, and rebuttal validity reports were due within days.  This factor favored exercising discretion to deny institution.

The Board considers the “overlap between issues raised in the petition and in the parallel proceeding” under Fintiv factor 4.  Petitioner stipulated that if inter partes review is instituted, it would not “pursue invalidity challenges to the [asserted patent] in the parallel district court lawsuit that rely on any reference used in the grounds of the Petition.”  This stipulation was not as expansive as Sotera because Petitioner did not relinquish all grounds that it reasonably could have raised.  But, the stipulation was broader than Sand Revolution because it precluded Petitioner from relying on any of the references used in the Petition, and was not limited to only the same grounds.  The Board found that the stipulation mitigated some but not all concerns of duplicative efforts. Petitioner’s arguments also relied on non-grounds references, which diminished the impact of the stipulation.  On a whole, the Board found that this factor weighed somewhat against exercising discretion to deny institution.

Petitioner is the defendant in the underlying litigation, which weighed in favor of discretionary denial under Fintiv factor 5.

The Board evaluated “other circumstances that impact the Board’s exercise of discretion, including the merits” under Fintiv factor 6, and found that:

  • Based on the facts, Petitioner had not shown compelling merits (this finding had no impact on discretionary denial), and
  • Five previous petitions had already been filed on the asserted patent, none of which resulted in a finding that any claim was unpatentable. This weighed slightly in favor of discretionary denial.

Considering all of the factors, and noting that the stipulation was the only thing weighing slightly against discretionary denial, the Board exercised its discretion to deny institution.


The following two tabs change content below.
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.