OveRlaPPIng Issues In DIscRetIOnaRy DenIals Of IPR PetItIOns
Intellectual Property Section Chairs : Elana Faniel - Greenway Law Firm , P . A . & Patrick Reid - Burr & Forman LLP
Overlapping of issues carries significant weight in instituting an IPR when a co-pending proceeding exists in a district court .
In Apple Inc . v . Fintiv , Inc ., the Patent Trial and Appeal Board ( PTAB ) denied institution of Apple ’ s petition for Inter-Partes Review ( IPR ) and set forth a test for whether to institute an IPR when there is co-pending litigation . 1 The PTAB considered six factors : ( 1 ) whether a stay has been or is likely to be granted ; ( 2 ) the proximity of the trial date to the expected deadline for a final written decision ; ( 3 ) investment by the parties in the litigation ; ( 4 ) degree of overlap between the issues ; ( 5 ) whether the parties are the same ; and ( 6 ) any other discretionary factors , including the merits of the petition . 2 Analyzing the factors , the PTAB noted that the co-pending case involved the same parties , the same prior art , and the same patent claims . The PTAB also found that the parties had invested significant resources , and the trial date was set before the final written decision deadline . Ultimately , no factors weighed in favor of institution . While none of the factors weighed in favor of institution in Fintiv , that is not likely to be the norm . Instead , most cases are likely to have a split of the six factors .
When that is the case , petitioners need to understand which factors should receive more focus in their respective arguments . Two subsequent decisions illustrate that Fintiv factor four should be given careful attention by the petitioner .
In Apple Inc . v . Maxwell , Ltd ., the PTAB granted institution due to a lack of overlap . 3 Maxwell sued Apple on multiple patents and trial was set for October 2020 . 4 The parties had also invested significant resources in the litigation , evidenced by proceeding to a claim construction order . 5 Thus , several factors weighed against institution . However , Apple promised to withdraw the primary reference used in the IPR petition from the litigation if the IPR were instituted . 6 The petition also challenged five additional claims that were not at issue in the litigation . 7 Because there would be almost no overlap , the PTAB panel instituted the IPR . In a second Apple Inc . v . Maxwell , Ltd . petition , Apple challenged another patent involved in the litigation and the PTAB came to the opposite conclusion , denying institution . 8 Again , Fintiv factor four was crucial . In this case , the PTAB found that all the factors were the same , except Apple did not promise to eliminate any of the references and only challenged one additional claim . 9 Because the petition used the same references against the same claim scope , factor four weighed against institution and , the PTAB denied institution . 10
When an accused infringer decides to file an IPR petition after a litigation has begun , it is a good idea to assert different grounds against more or different patent claims . That will increase the likelihood of institution . n
1
IPR2020-00019 , Paper 11 ( PTAB March 20 , 2020 ) ( precedential , designated May 5 , 2020 ).
2
Id . at 6 .
3
IPR 2020-00204 , Paper 11 ( PTAB June 19 , 2020 ).
4
Id . at 13 .
5
Id . at 14 .
6
Id . at 15 .
7
Id .
8
IPR 2020-00203 , Paper 12 ( PTAB July 6 , 2020 ).
9
Id . at 12 .
10
Id . at 17 .
Author : Patrick Reid - Burr & Forman LLP
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