• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Clear Imaging Research, LLCInstitution denied
  PTAB · Mar 4, 2021 · IPR2020-01402 · APJ Minn Chung · IPR · Institution

  The Board denied institution for claims 1–30 under § 314(a), finding the Fintiv factors favored discretionary denial in light of the parallel district court litigation.

  RulingsInstitution decision

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

    “trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution under NHK.” Fintiv, Paper 11 at 9 (emphasis added). Here, the parallel trial in the District Court is scheduled to begin on April 5, 2021, about eleven months before a Final Written Decision would be due in this IPR proceeding. Pet. 77; Prelim. Resp. 22; Ex. 1026. Although we acknowledge the possibility of a Covid-19 related delay, we generally take courts’ trial schedules at face value absent some strong evidence to the contrary. Fintiv DDI, Paper 15 at 12−13. Here, even accounting for the possibility of a Covid-19 related delay, given the close proximity of the trial date to this Decision and the amount of time between the trial date and our Final Written Decision (i.e., eleven months), we are unpersuaded that any such delay should materially alter our weighing of this factor. Notably, even if we were to assume that there may be a four-month delay, this factor would still weigh in favor of exercising our discretion to deny institution because the parallel trial in the District Court would begin about seven months before a Final Written Decision would be due in this proceeding. See NHK, Paper 8 at 20 (finding that “the advanced state of the district court proceeding . . . weighs in favor of denying the Petition under § 314(a)” because the district court trial was set to begin six months before the IPR proceeding concluded); see also Fintiv DDI, Paper 15 at 13 (finding that “[b]ecause the currently scheduled District Court trial is scheduled to begin two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial in this case”).” slip op. at 16

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied

    “of title 35 of the United States Code provides that “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The U.S. Supreme Court has explained that because § 314 includes no mandate to institute review, “the agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”). The Director has delegated this authority under § 314(a) to the Board. 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 8

  Discretionary denial
  Patents in suitUS 9,392,175

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