• Resmed Corp. v. Cleveland Medical Devices Inc.Institution denied
  PTAB · Sep 25, 2023 · IPR2023-00565 · APJ Ulrike W Jenks · IPR · Institution

  The Board denied institution of IPR challenging claims 1–20 because the Fintiv factors favored discretionary denial, and the petition did not present a compelling unpatentability challenge.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “and the district court, we have concerns regarding duplicative efforts and potentially conflicting decisions (including due to Petitioner’s different claim construction positions in the district court and in this IPR, see infra Section II.f). We agree with Patent Owner that a Sotera-type stipulation would have helped ensure that an inter partes review functions as a true alternative to litigation in relation to grounds that could be at issue in an inter partes review. Here, Petitioner could have expressly waived in district court any overlapping patentability or invalidity defenses but chose not to. Given the facts here, this factor weighs in favor of exercising discretion to deny institution.” slip op. at 14

  Discretionary denialcites Phillips
  Patents in suitUS 10,076,269
• 3shape Trios A/S / 3shape A/S v. Densys Ltd.Institution denied
  PTAB · May 20, 2021 · IPR2021-00236 · APJ Ulrike W Jenks · IPR · Institution

  The Board denied institution for all challenged claims under § 314(a), finding that the Fintiv factors favored denial because the advanced parallel litigation risked inefficient duplication.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “The Board’s precedential Fintiv decision identifies several factors that balance 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, such as the related litigation here. Fintiv, Paper 11 at 5–6. 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. Id. We now consider these factors to assess whether we should exercise discretion to deny institution under 35 U.S.C. § 314(a). “[I]n evaluating the factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. B. Fintiv Factors” slip op. at 7

  Discretionary denial
  Patents in suitUS 6,402,707

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.