- PTAB · Apr 13, 2022 · IPR2022-00229 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution for claims 1 and 46 under § 314(a), finding that the Fintiv factors and parallel litigation supported discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“court has stayed or may stay the proceeding pending inter partes review. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” See Fintiv, Paper 11 at 6.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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.” Upon consideration of the evidence and arguments in the Petition as well as the evidence and arguments in the Preliminary Response, for the reasons below and based on the particular facts of this case, we exercise our discretion under 35 U.S.C. § 314(a) and decline to institute inter partes review of the ’040 patent.” slip op. at 2
Discretionary denialPatents in suitUS 7,464,040 - Apple Inc. v. Optis Wireless Technology, LLCInstitution deniedPTAB · Sep 15, 2020 · IPR2020-00466 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution of review of claims 1–10 under § 314(a), finding that the Fintiv factors favored denial after the parallel district court trial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“instituting an inter partes review would be an inefficient use of Board resources. As discussed above, the trial in the parallel proceeding recently concluded more than one year before we would reach a final decision in this proceeding if we instituted an inter partes review. Moreover, the district court and the parties expended considerable effort in preparing for and conducting the trial. These considerations strongly favor the exercise of discretionary denial, other considerations favor denial, and no considerations weigh against the exercise of discretionary denial in this case. On balance, after a holistic consideration of the relevant facts and the particular circumstances of this case, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“instituting an inter partes review would be an inefficient use of Board resources. As discussed above, the trial in the parallel proceeding recently concluded more than one year before we would reach a final decision in this proceeding if we instituted an inter partes review. Moreover, the district court and the parties expended considerable effort in preparing for and conducting the trial. These considerations strongly favor the exercise of discretionary denial, other considerations favor denial, and no considerations weigh against the exercise of discretionary denial in this case. On balance, after a holistic consideration of the relevant facts and the particular circumstances of this case, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 15
Discretionary denialPatents in suitUS 8,411,557 - Apple Inc. v. Maxell, Ltd.Institution deniedPTAB · Jul 6, 2020 · IPR2020-00203 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution of IPR challenging claims 1, 6, and 7, exercising § 314(a) discretion because Fintiv factors favored denial amid overlapping, advanced district court litigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“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.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“concerns and the possibility of conflicting decisions. Fintiv, Paper 11 at 12. Therefore, “if the petition includes the same or substantially the same claims, grounds, arguments, and evidence as presented in the parallel proceeding, this fact has favored denial.” Id. In this case, although the obviousness ground asserted here is not identical to either ground in Petitioner’s final invalidity contentions, both of the references relied on in the Petition are asserted in the underlying litigation. As illustrated by Patent Owner’s comparison of citations in the Petition with those in Petitioner’s preliminary invalidity contentions in district court, substantial overlap exists between the disclosures of Waldroup and Nakayama relied on in the two proceedings. See Prelim. Resp. 8–9 (comparing Pet. 25–58 with Ex. 2004, 1–39). Thus, arguments and evidence regarding the teachings of Waldroup and Nakayama in the Petition are substantially the same as those in the underlying litigation. Although there may be some differences in the reasoning presented in the various obviousness grounds for combining the prior art teachings, we nevertheless find the assertion of Waldroup and Nakayama in both proceedings may result in duplication of work and create the potential for inconsistent decisions.” slip op. at 14
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,408,193
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.