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ARTICLE · 19 MAY 2020

PTAB Designates Decision On Discretionary Denial As Precedential

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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The PTAB has discretion to decline to institute an inter partes review for many reasons, including if a parallel district court proceeding is ongoing.

United StatesIntellectual Property
Brooke M. Wilner
Brooke M. Wilner
Amanda Murphy
Amanda Murphy
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The PTAB has discretion to decline to institute an inter partes review for many reasons, including if a parallel district court proceeding is ongoing. In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)—designated precedential on May 5, 2020—the Board described six non-dispositive factors it may consider under 35 U.S.C. § 314(a) in determining whether to institute an IPR that involves an ongoing parallel district court proceeding.1 

When the petitioner in Apple Inc. filed its petition, a district court proceeding involving the same patent was fairly advanced, although no trial date had yet been set. By the time the patent owner filed its preliminary response, the district court had scheduled the trial to be held six months before the statutory deadline for the PTAB's Final Written Decision. The patent owner argued that the PTAB should deny institution because the petitioner had raised the same invalidity challenges in the district court

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