In its precedential decision in Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), the PTAB set forth a six factor “holistic” test for balancing considerations of system efficiency, fairness, and patent quality when a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding.

Recently, the PTAB designated two decisions applying those Fintiv factors as informative.

Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020) (informative)

This decision denies institution upon applying the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (the Fintiv factors) when the trial is scheduled to begin two months before the due date for the final written decision, the district court has invested in the validity issues, there is a substantial overlap in the patentability challenges, and the petition is not strong on the merits.

Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 (June 16, 2020) (informative)

This decision institutes an inter partes review (IPR) upon applying the Fintiv factors when it is uncertain whether the trial will take place before the final written decision, the district court has not made a significant investment in the validity issues, the petitioner stipulated not to raise in the district court the same patentability grounds raised in the IPR, and the petition is strong on the merits.

We will cover these decisions in more detail in the days to come.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.

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