`
`Howreliable are trial dates relied on by the PTABin the
`Fintiv analysis?
`
`By Andrew T. Dufresne, Nathan K. Kelley & Lori Gordon on October 29, 2021
`
`In recent years, the Patent Trial and Appeal Board has frequently declined to institute IPRs
`for procedural reasonsunrelatedto a petition’s substantive strength. In particular, the Board
`has increasingly denied petitions in view of related, parallellitigation that it perceives as so
`far advancedthatit would be mostefficient to deny institution and leave patentability issues
`
`
`(PTAB Mar. 20, 2020)(Precedential). Key among the factors guiding those Fintiv denials is
`whether and to what extent the other proceeding’strial date is scheduled to precede the
`Board’s deadline for issuing a final written decision, i.e., Fintiv factor two. /d. at 9.
`
`But how reliable are thosetrial dates?
`
`The Board “generally take[s] trial courts’ trial schedules at face value absent some strong
`
`
`
`data sets that suggested suchtrial dates often change and therefore present an unreliable
`basis for denying institution. We took a more comprehensivelookat this question by
`identifying all discretionary denials that were based onparallellitigation and issued between
`May and October 2020. That six-month period opened the same monththat Fintiv was
`designated precedential and ended approximately one year ago, allowing us to evaluate
`whatactually happened over the intervening year when an IPR otherwise would have taken
`place and reacheda final written decision within the 12-month timeframe required by statute.
`
`APPLE
`APPLE
`EXHIBIT 1009 - PAGE 0001
`EXHIBIT 1009 - PAGE 0001
`
`
`
`The Board was almost always wrong when predicting trial dates in
`parallel litigation
`
`Our results confirm the prior criticism. Out of 55 discretionary denials, only seven citedatrial
`date that proved accurate.[1] Notably, in four of those, the cited date was correct because
`trial had already occurred whenthe Board deniedinstitution. Apple Inc. v. Unwired Planet
`Int'l Ltd., IPR2020-00642, Paper 15 (PTAB Sept. 9, 2020); Apple Inc. v. Optis Wireless Tech.,
`LLC, IPR2020-00466, Paper 13 (PTAB Sept. 15, 2020); Apple Inc. v. Optis Cellular Tech.,
`LLC, IPR2020-00465, Paper 13 (PTAB Sept. 17, 2020); Amazon.com, Inc. v. Vocalife LLC,
`IPR2020-00864, Paper 22 (PTAB Oct. 28, 2020). When evaluating future trial dates, the
`Board was wrong 94% ofthe time (48/51).
`
`PTAB Accuracy Predicting Future
`Trial Dates
`
`
`
`«Correct ®|ncorrect
`
`The discrepancies were often substantial. Out of the 51 cases where the Board relied on a
`predicted future trial date, only three occurred on time. For the others, one was delayed by
`less than one month, five were delayed by 1-3 months, 17 were delayed by 3-6 months,
`three were delayed by 6-12 months, and seven remain pending pre-trial, well beyond the
`
`APPLE
`APPLE
`EXHIBIT 1009 - PAGE 0002
`EXHIBIT 1009 - PAGE 0002
`
`
`
`earlier trial date the Board accepted at face value. Another15 litigations were terminated
`without any ruling on validity (for reasons including settlement, bankruptcy, and summary
`judgmenton other issues).
`
`TeninatedDs
`
`Stil Unresolved SR
`
`6-12m. i
`
`3-6.ET
`
`1-3mo.
`
`<imo. 9
`
`OnTime
`
`Conclusions
`
`The Board’s reliance on scheduled trial dates has proven remarkably inaccurate, and our
`results contradict the Board’s stated practice under Fintiv of simply accepting nominal trial
`dates at face value underFintiv factor two. Trial dates in patentlitigation are not stable and
`make a very poor barometerfor evaluating the potential efficiency of denying institution
`
`based on a parallel proceeding.
`
`[1] Our methodology counted AIAtrials individually, including when multiple petitions
`were related to the sameparallel litigation. The percentages remained approximately the
`sameif related AIAtrials were grouped bylitigation, with errors in predicting future trial dates
`occurring in 95% of related proceedings.
`
`APPLE
`APPLE
`EXHIBIT 1009 - PAGE 0003
`EXHIBIT 1009 - PAGE 0003
`
`
`
`Copyright © 2021, Perkins Coie LLP. All Rights Reserved.
`
`APPLE
`APPLE
`EXHIBIT 1009 - PAGE 0004
`EXHIBIT 1009 - PAGE 0004
`
`
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