On Thursday, December 17, 2020, the Board designated portions of two decisions applying the Fintiv factors as precedential:  Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (precedential as to § II.A) and Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 (Oct. 21, 2020) (precedential as to § II.A). 

The Fintiv factors, set forth below, guide the Board’s analysis regarding whether to deny institution under 35 U.S.C. § 314(a) in view of a related litigation:

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.

In Sotera Wireless, the Board noted that the petitioner’s broad stipulation not to pursue in district court any ground that it raised, or reasonably could have raised, in the IPR “weighs strongly in favor of not exercising discretion to deny institution.” The Sotera petition was filed approximately two weeks before the one-year time bar under 35 U.S.C. § 315(b).  At the time of institution, infringement and invalidity contentions had been served in district court, but fact discovery was still ongoing, and trial was set to begin around the time that the Board would issue its final written decision if the IPR was instituted.  The petitioner had filed a stipulation in the district court stating that, if the PTAB instituted the IPR, the petitioner would not pursue in the district court any ground that it raised or reasonably could have raised in the IPR.  The petitioner had also filed a motion to stay, but the district court had not yet ruled on the motion.  Applying a “holistic review” of the Fintiv factors, including (1) that the petition timing was reasonable in view of the number of patents and challenged claims in this and petitioner’s related petitions, (2) the relatively limited investment in the parallel proceeding to date, and (3) the minimal potential overlap between the two proceedings in view of petitioner’s stipulation, the Board declined to deny institution under § 314(a).

In Snap, Inc., the Board noted that a district court stay that would remain in place until a final written decision issued in the IPR “weighed strongly against exercising discretion to deny institution.”  In this case, at the time the petition was filed, preliminary contentions and claim construction positions had been exchanged and initial discovery had begun in the district court, but the court had not yet issued any substantive orders and had stayed the case pending either a denial of institution or a final written decision in the IPR.  Taking a “holistic view” of the Fintiv factors, the Board declined to deny institution under § 314(a), noting (1) the stay in the parallel district court proceeding, (2) the early stages of that parallel proceeding prior to the stay being granted, and (3) the lack of overlap between the invalidity contentions in the district court proceeding and the challenges raised in the petition.