The PTAB recently issued back-to-back Fintiv denials.  The first denial issued on May 4, 2023.  Read here about Samsung Electronics Co. Ltd. v. California Institute of Tech., No. IPR2023-00130, Paper 10 (P.T.A.B. May 4, 2023).  And the second denial issued the very next day.  Roku, Inc. v. IOENGINE, LLC, No. IPR2022-01554, Paper 11 (P.T.A.B. May 5, 2023).  These decisions are notable for both their timing—two decisions in rapid succession after a months-long dry spell—and for the emphasis on avoiding duplication and overlap between the PTAB and the parallel proceedings (e.g., via a Sotera-type stipulation).

In the second decision, the PTAB employed a “holistic balancing” of the factors and found the Fintiv factors weighed in favor of discretionary denial.  Roku, Paper 11 at 17.  Specifically, the PTAB analyzed the factors as follows:

• Factor 1: District Court’s Stay of Parallel Proceeding.  The PTAB noted that the presiding judge in the parallel proceedings, Judge Albright, had not granted a stay in this case, and, moreover, stated that in 30 months on the bench, he had granted a stay pending PTAB review in only one or two cases.  The PTAB regarded this factor as neutral.
• Factor 2: Trial Date for Parallel Proceeding.  After considering that the median time-to-trial in the Western District of Texas for patent trials before Judge Albright is currently 23 months, the PTAB concluded that trial in the district court case would likely occur six months before the PTAB reach a final written decision.  The PTAB found that this factor weighed heavily in favor of denial.
• Factor 3: Investment in Parallel Proceeding.  The parallel proceeding in this instance had been filed in December 2021 and was in an advanced stage at the time the IPR was filed.  For this reason, the PTAB determined “that there has been substantial investment by the parties and the district court in the parallel proceeding, including the completion of preliminary disclosures and claim construction, and the near-completion of discovery.”  Paper 10 at 12.  The PTAB concluded this factor weighed heavily in favor of denial.
• Factor 4: Overlap in Issues.  At the time the Patent Owner filed its Preliminary Response, the Petitioner had not offered any stipulation not to pursue any overlapping subject matter in the parallel proceedings.  Thereafter, Petitioner sought leave to submit a stipulation, which was granted, but the PTAB nonetheless found that the stipulation was insufficient for two reasons.  First, the stipulation would not have prevented the Petitioner from asserting the same subject matter against a separate, closely related patent at issue before the District Court, but not before the PTAB.  (We note that stipulations regarding patents other than the patent-at-issue is not a typical factor, where we will continue to monitor development of this line of reasoning.)  Second, the PTAB concluded that the offered stipulation “falls far short of a Sotera-type stipulation” because it did not bar grounds that “could have reasonably been raised before the Board.”  Paper 10 at 14.  Thus, although the stipulation would have prevented some overlap, it did not rise the level contemplated in the Fintiv  The PTAB found this factor weight somewhat against discretionary denial, but the factor did not end the inquiry because the Petitioner declined to submit a Sotera-type stipulation.
• Factor 5: Same Parties.  Because the parties were the same before the PTAB and District Court, the PTAB regarded the factor as neutral.
• Factor 6: Other Circumstances.  The Petitioner argued that its petition presented a “compelling, meritorious challenge” sufficient to justify going forward with the IPR in light of these circumstances.  The PTAB considered the arguments on the merits, but concluded the Petitioner had not presented a compelling case.  Thus, this factor did not weigh against denial.

This decision, and the back-to-back denial in Samsung, show that despite the relative dry spell of the last several months, the PTAB will issue a Fintiv denial in certain circumstances.  Moreover, this decision shows that a key element of the analysis is the amount of overlapping adjudication between the PTAB and the parallel proceeding—particularly whether the petitioner has submitted a Soltera-type stipulation—and any inefficiencies involved based on the stage of the parallel proceedings and likelihood that they might be stayed.