PTAB Designates Fintive Factor Decisions Infomative

Jones Day
Contact

Jones Day

In its precedential decision in Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), the PTAB set forth a six factor “holistic” test for balancing 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.

Recently, the PTAB designated two decisions applying those Fintiv factors as informative.

Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020) (informative)

This decision denies institution upon applying the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (the Fintiv factors) when the trial is scheduled to begin two months before the due date for the final written decision, the district court has invested in the validity issues, there is a substantial overlap in the patentability challenges, and the petition is not strong on the merits.

Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 (June 16, 2020) (informative)

This decision institutes an inter partes review (IPR) upon applying the Fintiv factors when it is uncertain whether the trial will take place before the final written decision, the district court has not made a significant investment in the validity issues, the petitioner stipulated not to raise in the district court the same patentability grounds raised in the IPR, and the petition is strong on the merits.

We will cover these decisions in more detail in the days to come.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations. Attorney Advertising.

© Jones Day

Written by:

Jones Day
Contact
more
less

PUBLISH YOUR CONTENT ON JD SUPRA NOW

  • Increased visibility
  • Actionable analytics
  • Ongoing guidance

Jones Day on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide