Fintiv Factors 2 and 4 Save Petitioner’s Request for Rehearing

In SharkNinja Operating LLC v. iRobot Corp., No. IPR2021-00544, Paper 13 (PTAB Nov. 17, 2021), the PTAB granted the petitioner’s Request for Rehearing and Institution of Inter Partes Review (“IPR”).

The Board initially denied institution based on an analysis of the Fintiv factors.[1]  In its Request for Rehearing, the petitioner argued that the Board abused its discretion in denying institution.  The petitioner’s arguments centered on two of the four Fintiv factors: factor 2 (“proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision”) and factor 4 (“overlap between issues raised in the petition and in the parallel proceeding”).

In its initial Decision Denying Institution, the Board determined that Fintiv factor 2 weighed “in favor of exercising our discretion to deny institution” based on a parallel U.S. International Trade Commission investigation.  SharkNinja, IPR2021-00544, Paper 13.  In its Request for Rehearing, the petitioner argued that the Board mistakenly treated the ITC’s initial determination date as the final determination date and, consequentially, overlooked the target date for final determination.  Agreeing with the petitioner, the Board found that Fintiv factor 2 was neutral because of the close proximity between the ITC’s target date and the expected final written decision.

 In its initial Decision Denying Institution, the Board determined that Fintiv factor 4 weighed “marginally in favor of not exercising discretion to deny institution.”  SharkNinja, IPR2021-00544, Paper 13.  In its Request for Rehearing, the petitioner agreed to a broad stipulation of IPR estoppel.  As a result, the PTAB found that Fintiv factor 4 “weigh[ed] strongly in favor of not exercising [its] discretion to deny institution,” since the petitioner’s stipulation removed the concern of duplicative efforts between the three proceedings. Id. at 12.  The Board further noted that the stipulation promoted efficiency and would avoid conflicting decisions.

Concluding that the change in the Fintiv factor analysis justified rehearing and reconsideration of its previous decision, the Board considered the merits of the petition.  Ultimately, the Board determined that the petitioner showed a reasonable likelihood of establishing claim 1 of the challenged patent was obvious in light of the prior art and granted institution.

[1] Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”).