2/3/22, 6:00 PM
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`How reliable are trial dates relied on by the PTAB in the Fintiv analysis? | 1600 PTAB & Beyond
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`1600 PTAB & Beyond
`1600 PTAB & Beyond
`
`PeRKINSCOie
`
`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 frequently 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. Apple 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.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, at 12-13 (PTAB May 13, 2020)
`(Informative). Some have questioned 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.
`
`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’l Ltd., IPR2020-00642,
`Paper 15 (PTAB Sept. 9, 2020); Apple Inc. v. Optis Wireless Tech., LLC, IPR2020-00466, Paper 13
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`EXHIBIT 1029
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`2/3/22, 6:00 PM
`How reliable are trial dates relied on by the PTAB in the Fintiv analysis? | 1600 PTAB & Beyond
`(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 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).
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`How reliable are trial dates relied on by the PTAB in the Fintiv analysis? | 1600 PTAB & Beyond
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`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
`
`Copyright © 2022, Perkins Coie LLP. All Rights Reserved.
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