By Alex Li and Matt Johnson

The Patent Trial and Appeal Board (PTAB) has the discretion to deny institution of any inter partes review (IPR).  Such discretionary denial may be based on a variety of considerations, such as the existence of an ongoing district court litigation reviewing the validity of the same patent, because the PTAB considers a proceeding in parallel with the district court an inefficient use of resources.  In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020) (precedential) (“Fintiv”), the PTAB set forth six factors for analyzing whether the circumstances of a parallel district court action warrants the PTAB’s discretionary denial of institution.  These factors are:

  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.

Please see our previous blog post on the Fintiv factors (

On July 13, 2020, the PTAB designated as informative the decision Sand Revolution II, LLC. v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 (June 16, 2020) (“Sand Revolution”), in which the PTAB applied the Fintiv factors in rendering the decision.

In the Sand Revolution case, the PTAB initially denied institution of Petitioner Sand Revolution II’s IPR petition due the fact that the Petitioner and the Patent Owner were also litigating the patent in the Western District of Texas.  However, after the issuance of the Fintiv decision, the Petitioner requested the PTAB’s rehearing, which the PTAB granted.

In applying the Fintiv factors, the PTAB found that the first factor (granting of stay) did not favor either exercising or not exercising discretionary denial, because there the parties did not request a stay in the district court litigation.

For the second factor (proximity of trial date), the PTAB found that the factor marginally favored not exercising discretionary denial, because the tentative trial date was quite uncertain, given that the trial schedule had already been delayed a number of times.

For the third factor (court’s investment), the PTAB found that the factor only marginally favored exercising discretionary denial, because although the district court had completed Markman hearing, the “two-page Markman Order in this case does not demonstrate the same high level of investment of time and resources.”

For the fourth factor (overlapping of issues), the PTAB found that the factor weighted marginally in favor of not exercising discretionary denial, because Petitioner had stipulated with the Patent Owner that it would not pursue the same grounds in the district court in the IPR.  See our prior coverage of Fintiv Factor Four here.

For the fifth factor (same party), the PTAB found that the factor weighted in favor of discretionary denial, because the parties before the PTAB and the parties in the district court litigation were the same.

For the final factor (other circumstances), the PTAB that the factor weighted in favor of not exercising discretionary denial, because the PTAB found that the Petitioner’s case was “strong on most challenged claims.”

The PTAB therefore found that, on the whole, the Fintiv factors weighed against invoking discretion to deny institution.  The PTAB further found that the Petitioner had a reasonable likelihood of prevailing at trial in demonstrating the obviousness of the challenged claims, and therefore ordered institution of an IPR.


It appears that in applying the Fintiv factors, no single factor is dispositive.  Moreover, although not explicitly listed, the strength of the petitioner’s case may also be a consideration for the PTAB in deciding whether to institute an IPR.

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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.