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ARTICLE · 19 JANUARY 2021

No Discretionary Denial When Parallel District Court Case Is Currently Stayed

Winston Taylor
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In a case where a parallel district court proceeding between the parties had already been stayed pending resolution of the IPR petition.

United StatesIntellectual Property
Louis L. Campbell
Louis L. Campbell
Michael R. Rueckheim
Michael R. Rueckheim
Eimeric Reig-Plessis
Eimeric Reig-Plessis
Vivek V. Krishnan
Vivek V. Krishnan
Sharon Lin
Sharon Lin

Snap, Inc. v. SRK Technology LLC, Case IPR2020-00820, Paper 15 (PTAB Oct. 21, 2020).

Before: Droesch, Braden, Boudreau.

In a case where a parallel district court proceeding between the parties had already been stayed pending resolution of the IPR petition, the Board examined the six-factor Fintiv test to determine whether the petition should be denied institution under the Board's discretionary authority.

The existence of the stay tipped the balance on the first and second Fintiv factors. Under the first factor (stay), although the parallel proceeding was presently stayed, the Patent Owner argued that because the stay would be lifted if the petition were denied and the parallel district court trial would be held prior to the date a final written decision would be due, this factor should weigh in favor of a discretionary denial. The Board disagreed. Because the parallel proceeding would remain stayed until a final written decision, this factor

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