Some Conditions May Apply – Fintiv Factor 4 Analysis

In a recent decision, the Patent Trial and Appeal Board granted institution of inter partes review after accepting the Petitioner Microsoft's stipulation to forego overlapping challenges in parallel district court proceedings conditioned upon institution of IPR.  Microsoft Corp. v. D3D Tech., Inc., IPR2021-00647, Paper 10 (PTAB Sept. 1, 2021).  The Patent Owner D3D urged the PTAB to exercise its discretion to deny institution, but the Board found that Microsoft's conditional stipulation mitigated inefficiencies caused by an overlap of issues between the IPR proceeding and the district court proceeding.  Concluding that the Fintiv  factors weighed against a discretionary denial, the PTAB instituted IPR of D3D's patent.