`PeRKINS COle
`1600 F> B &
`
`SIGNIFICANT PATENT DECISIONS AND DEVELOPMENTS AFFECTING THE LIFE SCIENCES
`INDUSTRY
`
`How reliable are trial dates relied on by the PTAB in 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 freguentlY. declined to institute IPRs
`for procedural reasons unrelated to a petition's substantive strength. In particular, the Board
`has increasingly denied petitions in view of related , parallel litigation that it perceives as so
`far advanced that it would be most efficient to deny institution and leave patentability issues
`to be resolved in the other forum. AiJp[e Inc. v. Fintiv, Inc" IPR2020-00019, Paper 11
`.(PTAB Mar. 20, 2020)_(Precedential).. Key among the factors guiding those Fintiv denials is
`whether and to what extent the other proceeding's trial date is scheduled to precede the
`Board's deadline for issuing a final written decision, i.e., Fintiv factor two. Id. at 9.
`
`But how reliable are those trial dates?
`
`The Board "generally take[s] trial courts' trial schedules at face value absent some strong
`evidence to the contrary." ARR.le Inc. v. Fintiv, Inc., IPR2020-00019, PaRer 15, at 12-13
`.(PTAB May...1.3, 2020)_(1nformative). Some have guestioned that approach, citing limited
`data sets that suggested such trial dates often change and therefore present an unreliable
`basis for denying institution. We took a more comprehensive look at this question by
`identifying all discretionary denials that were based on parallel litigation and issued between
`May and October 2020. That six-month period opened the same month that Fintiv was
`designated precedential and ended approximately one year ago, allowing us to evaluate
`what actually happened over the intervening year when an IPR otherwise would have taken
`place and reached a final written decision within the 12-month timeframe required by statute.
`
`Exhibit 1016
`IPR2022-0427
`Page 1 of 4
`
`
`
`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 cited a trial
`date that proved accurate.[1] Notably, in four of those, the cited date was correct because
`trial had already occurred when the Board denied institution. Apple Inc. v. Unwired Planet
`Int'/ 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 % of the time ( 48/51 ).
`
`PTAB Accuracy Predicting Future
`Trial Dates
`
`• Correct
`
`• Incorrect
`
`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
`
`Exhibit 1016
`IPR2022-0427
`Page 2 of 4
`
`
`
`earlier trial date the Board accepted at face value. Another 15 litigations were terminated
`without any ruling on validity (for reasons including settlement, bankruptcy, and summary
`judgment on other issues).
`
`Terminated
`
`Stilll Unresolved
`
`B 12 o.
`
`3 - 16 mo.
`
`1 - lmo.
`
`s 1 mo.
`
`DnTime -
`
`0
`
`2
`
`4
`
`8
`
`2
`
`14
`
`18
`
`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 under Fintiv factor two. Trial dates in patent litigation are not stable and
`make a very poor barometer for evaluating the potential efficiency of denying institution
`based on a parallel proceeding.
`
`[1] Our methodology counted AIA trials individually, including when multiple petitions
`were related to the same parallel litigation. The percentages remained approximately the
`same if related AIA trials were grouped by litigation, with errors in predicting future trial dates
`occurring in 95% of related proceedings.
`
`1600 PTAB & Beyond
`Significant Patent Decisions and Developments Affecting The Life Sciences Industry
`
`Exhibit 1016
`IPR2022-0427
`Page 3 of 4
`
`
`
`Copyright© 2021, Perkins Coie LLP. All Rights Reserved.
`
`Exhibit 1016
`IPR2022-0427
`Page 4 of 4
`
`
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