Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 11
`Entered: March 20, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`____________
`
`Case IPR2020-00019
`Patent 8,843,125 B2
`___________
`
`
`Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
`LINDA E. HORNER and LYNNE E. PETTIGREW, Administrative Patent
`Judges.
`
`
`FINK, Vice Chief Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Supplemental Briefing on Discretionary Denial
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.5(a)
`
`
`
`

`

`IPR2020-00019
`Patent 8,843,125 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Apple, Inc., filed a Petition in this case on October 28,
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`2019, challenging certain claims of U.S. Patent No. 8,843,125 B2 (Ex. 1001,
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`“the ’125 patent”) owned by Patent Owner, Fintiv, Inc. Paper 1 (“Pet.”).
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`Patent Owner filed a Preliminary Response on February 15, 2020. Paper 10
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`(“Prelim. Resp.”). In its Preliminary Response, Patent Owner requests that
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`the Board apply its discretion under 35 U.S.C. § 314(a) to deny institution of
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`the requested proceeding due to the advanced state of a parallel district court
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`litigation in which the same issues have been presented and trial has been set
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`for November 16, 2020. Prelim. Resp. 22‒26 (citing NHK Spring Co. v.
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`Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
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`(precedential, designated May 7, 2019)). Although Petitioner addressed the
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`issue briefly in the Petition, at that time no trial date had been set. See
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`Pet. 7. In light of the apparent change in status of the parallel proceeding,
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`the panel has determined that supplemental briefing on the issue of
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`discretionary denial is necessary in this case to give Petitioner an
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`opportunity to respond. This Order discusses the factors relevant to the
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`Board’s decision on whether to apply its discretion under 35 U.S.C. § 314(a)
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`to deny institution. This Order authorizes the parties to file supplemental
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`briefing addressing facts in this case relevant to these factors.
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`II. DISCRETIONARY DENIAL UNDER NHK
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`In NHK, the patent owner argued the Board should deny institution
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`under 35 U.S.C. § 314(a) because institution of a trial at the PTAB would be
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`an inefficient use of Board resources in light of the “advanced state” of the
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`parallel district court litigation in which the petitioner had raised the same
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`invalidity challenges. IPR2018-00752, Paper 8. The Board denied
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`2
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`

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`IPR2020-00019
`Patent 8,843,125 B2
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`institution, relying in part on § 314(a). Specifically, under § 314(a) the
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`Board considered the fact that the parallel district court proceeding was
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`scheduled to finish before the Board reached a final decision as a factor
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`favoring denial.1 The Board found that the earlier district court trial date
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`presented efficiency considerations that provided an additional basis,
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`separate from the independent concerns under 35 U.S.C. § 325(d),2 for
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`denying institution. Thus, NHK applies to the situation where the district
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`court has set a trial date to occur earlier than the Board’s deadline to issue a
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`final written decision in an instituted proceeding. In a case where, in
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`contrast to the facts present in NHK, the district court has set a trial date
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`after the Board’s deadline to issue a final written decision in an instituted
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`proceeding, the Board may be less likely to deny institution under 35 U.S.C.
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`§ 314(a) based on district court trial timing depending on other factors as set
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`forth below.3
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`1 See 35 U.S.C. § 316(a)(11) (2018) (requiring issuance of a final written
`decision within one year of institution, absent extension up to six months for
`good cause).
`
`2 Section 325(d) provides that the Director may elect not to institute a
`proceeding if the challenge to the patent is based on the same or
`substantially the same prior art or arguments previously presented to the
`Office.
`
`3 See Polycom, Inc. v. directPacket Research, Inc., IPR2019-01233, Paper
`21 at 13 (PTAB Jan. 13, 2020) (declining to apply discretion to deny
`institution when district court trial is scheduled to occur months after the
`statutory deadline for completion of the IPR); Iconex, LLC v. MAXStick
`Products Ltd., IPR2019-01119, Paper 9 at 10 (PTAB Dec. 6, 2019) (same).
`
`3
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`

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`IPR2020-00019
`Patent 8,843,125 B2
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`
`A.
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`The Parties’ Arguments
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`In the Petition, Petitioner argues that although a parallel district court
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`proceeding is ongoing involving the challenged patent, the Board should not
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`exercise authority to deny institution under NHK because, at the time of the
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`Petition filing, “no preliminary injunction motion has been filed, the district
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`court has not been presented with or invested any time in the analysis of
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`prior art invalidity issues, and no trial date has been set.” Pet. 7. Petitioner
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`also argues that it timely filed its petition within the statutorily prescribed
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`one-year window, and that declining to institute IPR here would “essentially
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`render nugatory” the one-year filing period of § 315(b). Id. Petitioner also
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`argues that declining to institute an IPR based on a parallel district court
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`litigation “ignores the common scenario, contemplated by Congress, of
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`obtaining a district court stay based on institution.” Id.
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`In its Preliminary Response, Patent Owner has raised several factors
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`that it contends weigh in favor of exercising authority to deny institution
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`under NHK, including an earlier trial date (six months prior to the projected
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`deadline for a final written decision if the Board institutes a proceeding),4
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`significant overlap between issues raised in the Petition and in the district
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`court proceeding (identical claims and arguments), and investment in the
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`district court trial (claim construction already issued). See Prelim. Resp. 23‒
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`27.
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`4 After the filing of the Petition, the district court entered a scheduling order
`setting a trial date to occur prior to projected deadline for a final written
`decision in this matter. Ex. 2009 (setting trial date of November 16, 2020).
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`4
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`

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`IPR2020-00019
`Patent 8,843,125 B2
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`
`B.
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`Factors Related to a Parallel, Co-Pending Proceeding in
`Determining Whether to Exercise Discretionary Institution or
`Denial
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`As with other non-dispositive factors considered for institution under
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`35 U.S.C. § 314(a), an early trial date should be weighed as part of a
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`“balanced assessment of all relevant circumstances of the case, including the
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`merits.” 5 Consolidated Trial Practice Guide November 2019 (“TPG”)6 at
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`58. Indeed, the Board’s cases addressing earlier trial dates as a basis for
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`denial under NHK have sought to balance considerations such as system
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`efficiency, fairness, and patent quality.7 When the patent owner raises an
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`argument for discretionary denial under NHK due to an earlier trial date,8 the
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`Board’s decisions have balanced the following factors:
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`5 See Abbott Vascular, Inc. v. FlexStent, LLC, IPR2019-00882, Paper 11 at
`31 (PTAB Oct. 7, 2019) (declining to adopt a bright-line rule that an early
`trial date alone requires denial in every case).
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`6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`7 See Magellan Midstream Partners L.P. v. Sunoco Partners Marketing &
`Terminals L.P., IPR2019-01445, Paper 12 at 10 (PTAB Jan. 22, 2020)
`(citing “unnecessary and counterproductive litigation costs” where district
`court would most likely have issued a decision before the Board issues a
`final decision); Intel Corp. v. VLSI Tech. LLC, IPR2019-01192, Paper 15 at
`11 (PTAB Jan. 9, 2020) (“When considering the impact of parallel litigation
`in a decision to institute, the Board seeks, among other things, to minimize
`the duplication of work by two tribunals to resolve the same issue.”);
`Illumina, Inc. v. Natera, Inc., IPR2019-01201, Paper 19 at 6 (PTAB Dec. 18,
`2019) (“We have considered the positions of the parties and find that, on this
`record, considerations of efficiency, fairness, and the merits of the grounds
`in the Petition do not weigh in favor of denying the Petition.”).
`
`8 To the extent we refer to such a denial of institution as a “denial under
`NHK,” we refer to NHK’s § 314(a) denial due to the earlier trial date in the
`district court and not the independent basis for denial under § 325(d).
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`5
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`

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`IPR2020-00019
`Patent 8,843,125 B2
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`1. whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted;
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`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the
`parties;
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`4. overlap between issues raised in the petition and in the
`parallel proceeding;
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`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
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`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
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`These factors relate to whether efficiency, fairness, and the merits
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`support the exercise of authority to deny institution in view of an earlier trial
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`date in the parallel proceeding. As explained below, there is some overlap
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`among these factors. Some facts may be relevant to more than one factor.
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`Therefore, in evaluating the factors, the Board takes a holistic view of
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`whether efficiency and integrity of the system are best served by denying or
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`instituting review. See TPG at 58 (quoting 35 U.S.C. § 316(b)).
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`1.
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`whether a stay exists or is likely to be granted if a
`proceeding is instituted
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`A district court stay of the litigation pending resolution of the PTAB
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`trial allays concerns about inefficiency and duplication of efforts. This fact
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`has strongly weighed against exercising the authority to deny institution
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`under NHK.9 In some cases, there is no stay, but the district court has denied
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`
`9 See Precision Planting, LLC v. Deere & Co., IPR2019-01052, Paper 19 at
`10 (PTAB Jan. 7, 2020) (finding that the district court stay of the parallel
`district court case rendered moot the patent owner’s argument for
`discretionary denial of the petition); Apotex Inc. v. UCB Biopharma Sprl,
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`6
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`

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`IPR2020-00019
`Patent 8,843,125 B2
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`a motion for stay without prejudice and indicated to the parties that it will
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`consider a renewed motion or reconsider a motion to stay if a PTAB trial is
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`instituted. Such guidance from the district court, if made of record, suggests
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`the district court may be willing to avoid duplicative efforts and await the
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`PTAB’s final resolution of the patentability issues raised in the petition
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`before proceeding with the parallel litigation. This fact has usually weighed
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`against exercising authority to deny institution under NHK,10 but, for reasons
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`discussed below, proximity of the court’s trial date and investment of time
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`are relevant to how much weight to give to the court’s willingness to
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`reconsider a stay.11, 12 If a court has denied a defendant’s motion for a stay
`
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`IPR2019-00400, Paper 17 at 31‒32 (PTAB July 15, 2019) (finding that the
`district court stay of the parallel district court case predicated on the inter
`partes review means that the trial will not occur before the Board renders a
`final decision).
`
`10 See Abbott Vascular, IPR2019-00882, Paper 11 at 30‒31 (noting district
`court’s willingness to revisit request for stay if Board institutes an inter
`partes review proceeding).
`
`11 See DMF, Inc. v. AMP Plus, Inc., Case No. 2-18-cv-07090 (C.D. Cal. July
`12, 2019) (denying defendants’ initial motion to stay without prejudice to
`their renewing the motion should PTAB grant their IPR petition); id. (Dec.
`13, 2019) (denying renewed motion to stay after PTAB instituted, in part,
`because in the interim claim construction order had issued, trial date was fast
`approaching, and discovery was in an advanced stage).
`
`12 It is worth noting that the district court, in considering a motion for stay,
`may consider similar factors related to the amount of time already invested
`by the district court and proximity of the trial date to the Board’s deadline
`for a final written decision. See Space Data Corp. v. Alphabet Inc., Case
`No. 16-cv-03260, slip op. at 3 (N.D. Cal. Mar. 12, 2019) (denying motion to
`stay where the court had ruled on a motion for partial summary judgment
`and issued a Markman order, and fact and expert discovery are closed, and
`thus “much work has been completed”); Intellectual Ventures I LLC v. T-
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`7
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`

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`IPR2020-00019
`Patent 8,843,125 B2
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`pending resolution of a PTAB proceeding, and has not indicated to the
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`parties that it will consider a renewed motion or reconsider a motion to stay
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`if a PTAB trial is instituted, this fact has sometimes weighed in favor of
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`exercising authority to deny institution under NHK.
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`One particular situation in which stays arise frequently is during a
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`parallel district court and ITC investigation involving the challenged patent.
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`In such cases, the district court litigation is often stayed under 28 U.S.C.
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`§ 1659 pending the resolution of the ITC investigation. Regardless, even
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`though the Office and the district court would not be bound by the ITC’s
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`decision, an earlier ITC trial date may favor exercising authority to deny
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`institution under NHK if the ITC is going to decide the same or substantially
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`similar issues to those presented in the petition. The parties should indicate
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`whether there is a parallel district court case that is ongoing or stayed under
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`28 U.S.C. § 1659 pending the resolution of the ITC investigation. We
`
`
`Mobile USA, Inc., Case No. 2-17-cv-00577 (E. D. Tex. Dec. 13, 2018)
`(denying motion to stay after dispositive and Daubert motions had been filed
`and the court had expended material judicial resources to prepare for the
`pretrial in three weeks); Plastic Omnium Advanced Innovation and Research
`v. Donghee Am., Inc., Case No. 1-16-cv-00187 (D. Del. Mar. 9, 2018)
`(denying motion for stay after PTAB’s institution of inter partes reviews
`because the court “has construed the parties’ disputed claim terms, handled
`additional discovery-related disputes, begun reviewing the parties’ summary
`judgment and Daubert motions . . . and generally proceeded toward trial”
`and “[d]elaying the progress of this litigation . . . would risk wasting the
`Court’s resources”); Dentsply Int’l, Inc. v. US Endodontics, LLC, Case
`No. 2-14-cv-00196, slip op. at 5 (E.D. Tenn. Dec. 1, 2015) (denying motion
`for stay pending inter partes review because a stay at this point in the
`proceedings “would waste a significant amount of the time and resources
`already committed to this case by the parties and the Court”).
`
`8
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`

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`IPR2020-00019
`Patent 8,843,125 B2
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`recognize that ITC final invalidity determinations do not have preclusive
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`effect,13 but, as a practical matter, it is difficult to maintain a district court
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`proceeding on patent claims determined to be invalid at the ITC.
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`Accordingly, the parties should also indicate whether the patentability
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`disputes before the ITC will resolve all or substantially all of the
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`patentability disputes between the parties, regardless of the stay.14
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`2.
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`proximity of the court’s trial date to the Board’s
`projected statutory deadline
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`If the court’s trial date is earlier than the projected statutory deadline,
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`the Board generally has weighed this fact in favor of exercising authority to
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`deny institution under NHK. If the court’s trial date is at or around the same
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`time as the projected statutory deadline or even significantly after the
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`projected statutory deadline, the decision whether to institute will likely
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`implicate other factors discussed herein, such as the resources that have been
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`invested in the parallel proceeding.15
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`3.
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`investment in the parallel proceeding by the court and
`parties
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`The Board also has considered the amount and type of work already
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`completed in the parallel litigation by the court and the parties at the time of
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`the institution decision. Specifically, if, at the time of the institution
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`decision, the district court has issued substantive orders related to the patent
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`
`13 See Texas Instruments v. Cypress Semiconductor Corp., 90 F.3d 1558
`(Fed. Cir. 1996) (holding that an invalidity determination in an ITC section
`337 action does not have preclusive effect).
`
`14 See infra § II.A.4.
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`15 See, e.g., infra § II.A.3, § II.A.4.
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`9
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`

`

`IPR2020-00019
`Patent 8,843,125 B2
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`at issue in the petition, this fact favors denial.16 Likewise, district court
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`claim construction orders may indicate that the court and parties have
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`invested sufficient time in the parallel proceeding to favor denial.17 If, at the
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`time of the institution decision, the district court has not issued orders related
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`to the patent at issue in the petition, this fact weighs against exercising
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`discretion to deny institution under NHK.18 This investment factor is related
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`to the trial date factor, in that more work completed by the parties and court
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`in the parallel proceeding tends to support the arguments that the parallel
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`proceeding is more advanced, a stay may be less likely, and instituting
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`would lead to duplicative costs.
`
`
`16 See E-One, Inc. v. Oshkosh Corp., IPR2019-00162, Paper 16 at 8, 13, 20
`(PTAB June 5, 2019) (district court issued preliminary injunction order after
`finding petitioner’s invalidity contentions unlikely to succeed on the merits).
`
`17 See Next Caller, Inc. v. TRUSTID, Inc., IPR2019-00963, Paper 8 at 13
`(PTAB Oct. 28, 2019) (district court issued claim construction order);
`Thermo Fisher Scientific, Inc. v. Regents of the Univ. of Cal., IPR2018-
`01370, Paper 11 at 26 (PTAB Feb. 7, 2019) (district court issued claim
`construction order). We note that the weight to give claim construction
`orders may vary depending upon a particular district court’s practices. For
`example, some district courts may postpone significant discovery until after
`it issues a claim construction order, while others may not.
`
`18 See Facebook, Inc. v. Search and Social Media Partners, LLC, IPR2018-
`01620, Paper 8 at 24 (PTAB Mar. 1, 2019) (district court proceeding in its
`early stages, with no claim constructions having been determined);
`Amazon.com, Inc. v. CustomPlay, LLC, IPR2018-01496, Paper 12 at 8‒9
`(PTAB Mar. 7, 2019) (district court proceeding in its early stages, with no
`claim construction hearing held and district court having granted extensions
`of various deadlines in the schedule).
`
`10
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`

`

`IPR2020-00019
`Patent 8,843,125 B2
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`As a matter of petition timing, notwithstanding that a defendant has
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`one year to file a petition,19 it may impose unfair costs to a patent owner if
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`the petitioner, faced with the prospect of a looming trial date, waits until the
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`district court trial has progressed significantly before filing a petition at the
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`Office. The Board recognizes, however, that it is often reasonable for a
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`petitioner to wait to file its petition until it learns which claims are being
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`asserted against it in the parallel proceeding.20 Thus, the parties should
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`explain facts relevant to timing. If the evidence shows that the petitioner
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`filed the petition expeditiously, such as promptly after becoming aware of
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`the claims being asserted, this fact has weighed against exercising the
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`authority to deny institution under NHK.21 If, however, the evidence shows
`
`
`19 See 35 U.S.C. § 315(b) (2018) (setting a one-year window from the date
`on which the petitioner, real party in interest, or privy of the petitioner is
`served with a complaint alleging infringement of the patent in which to file a
`petition).
`
`20 See 157 Cong. Rec. S5429 (Sept. 8, 2011) (S. Kyl) (explaining that in
`light of the House bill’s enhanced estoppels, it is important to extend the
`deadline for allowing an accused infringer to seek inter partes review from 6
`months, as proposed in the Senate bill, to one year to afford defendants a
`reasonable opportunity to identify and understand the patent claims that are
`relevant to the litigation). Our discussion of this factor focuses on the
`situation where the petitioner also is a defendant in the parallel litigation. If
`the parallel litigation involves a party different than the petitioner, this fact
`weighs against exercising authority to deny institution under NHK. See infra
`§ II.A.5.
`
`21 See Intel Corp., IPR2019-01192, Paper 15 at 12‒13 (finding petitioner
`was diligent in filing the petition within two months of patent owner
`narrowing the asserted claims in the district court proceeding); Illumina,
`IPR2019-01201, Paper 19 at 8 (finding petitioner was diligent in filing the
`
`11
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`IPR2020-00019
`Patent 8,843,125 B2
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`that the petitioner did not file the petition expeditiously, such as at or around
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`the same time that the patent owner responds to the petitioner’s invalidity
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`contentions, or even if the petitioner cannot explain the delay in filing its
`
`petition, these facts have favored denial.22
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`4.
`
`overlap between issues raised in the petition and in the
`parallel proceeding
`
`In NHK, the Board was presented with substantially identical prior art
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`arguments that were at issue in the district court (as well as those previously
`
`addressed by the Office under § 325(d)). IPR2018-00752, Paper 8 at 20.
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`Thus, concerns of inefficiency and the possibility of conflicting decisions
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`were particularly strong. Accordingly, if the petition includes the same or
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`substantially the same claims, grounds, arguments, and evidence as
`
`presented in the parallel proceeding, this fact has favored denial.23
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`Conversely, if the petition includes materially different grounds, arguments,
`
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`petition several months before the statutory deadline and in response to the
`patent being added to the litigation in an amended complaint).
`
`22 See Next Caller, Inc. v. TRUSTID, Inc., IPR2019-00961, Paper 10 at 16
`(PTAB Oct. 16, 2019) (weighing the petitioner’s unexplained delay in filing
`the petition in favor of denial of the petition and noting that had the
`petitioner filed the petition around the same time as the service of its initial
`invalidity contentions, the PTAB proceeding may have resolved the issues
`prior to the district court).
`
`23 See Next Caller, IPR2019-00963, Paper 8 at 11‒12 (same grounds
`asserted in both cases); ZTE (USA) Inc. v. Fractus, S.A., IPR2018-01451,
`Paper 12 at 20 (PTAB Feb. 19, 2019) (same prior art and identical evidence
`and arguments in both cases).
`
`12
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`

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`IPR2020-00019
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`and/or evidence than those presented in the district court, this fact has tended
`
`to weigh against exercising discretion to deny institution under NHK.24
`
`In many cases, weighing the degree of overlap is highly fact
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`dependent. For example, if a petition involves the same prior art challenges
`
`but challenges claims in addition to those that are challenged in the district
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`court, it may still be inefficient to proceed because the district court may
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`resolve validity of enough overlapping claims to resolve key issues in the
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`petition. The parties should indicate whether all or some of the claims
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`challenged in the petition are also at issue in district court. The existence of
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`non-overlapping claim challenges will weigh for or against exercising
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`discretion to deny institution under NHK depending on the similarity of the
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`claims challenged in the petition to those at issue in the district court.25
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`5.
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`whether the petitioner and the defendant in the parallel
`proceeding are the same party
`
`If a petitioner is unrelated to a defendant in an earlier court
`
`proceeding, the Board has weighed this fact against exercising discretion to
`
`
`24 See Facebook, Inc. v. BlackBerry Limited, IPR2019-00899, Paper 15 at 12
`(PTAB Oct. 8, 2019) (different prior art relied on in the petition than in the
`district court); Chegg, Inc. v. NetSoc, LLC, IPR2019-01165, Paper 14 at 11–
`12 (PTAB Dec. 5, 2019) (different statutory grounds of unpatentability
`relied on in the petition and in the district court).
`
`25 See Next Caller, IPR2019-00961, Paper 10 at 14 (denying institution even
`though two petitions jointly involve all claims of patent and district court
`involves only a subset of claims because the claims all are directed to the
`same subject matter and petitioner does not argue that the non-overlapping
`claims differ significantly in some way or argue that it would be harmed if
`institution of the non-overlapping claims is denied).
`
`13
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`

`

`IPR2020-00019
`Patent 8,843,125 B2
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`deny institution under NHK.26 Even when a petitioner is unrelated to a
`
`defendant, however, if the issues are the same as, or substantially similar to,
`
`those already or about to be litigated, or other circumstances weigh against
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`redoing the work of another tribunal, the Board may, nonetheless, exercise
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`the authority to deny institution.27 An unrelated petitioner should, therefore,
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`address any other district court or Federal Circuit proceedings involving the
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`challenged patent to discuss why addressing the same or substantially the
`
`same issues would not be duplicative of the prior case even if the petition is
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`brought by a different party.
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`6.
`
`other circumstances that impact the Board’s exercise of
`discretion, including the merits
`
`As noted above, the factors considered in the exercise of discretion are
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`part of a balanced assessment of all the relevant circumstances in the case,
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`including the merits.28 For example, if the merits of a ground raised in the
`
`petition seem particularly strong on the preliminary record, this fact has
`
`
`26 See Nalox-1 Pharms., LLC. v. Opiant Pharms., Inc., IPR2019-00685,
`Paper 11 at 6 (PTAB Aug. 27, 2019) (distinguishing NHK because in NHK,
`“the Board considered ‘the status of the district court proceeding between the
`parties’” and, in the Nalox-1 case, the petitioner was not a party to the
`parallel district court litigations).
`
`27 See Stryker Corp. v. KFx Medical, LLC, IPR2019-00817, Paper 10 at 27‒
`28 (PTAB Sept. 16, 2019) (considering a jury verdict of no invalidity, based
`in part on evidence of secondary considerations, weighed in favor of
`denying institution where the unrelated petitioner failed to address this
`evidence in the petition).
`
`28 TPG at 58.
`
`14
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`IPR2020-00019
`Patent 8,843,125 B2
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`favored institution.29 In such cases, the institution of a trial may serve the
`
`interest of overall system efficiency and integrity because it allows the
`
`proceeding to continue in the event that the parallel proceeding settles or
`
`fails to resolve the patentability question presented in the PTAB
`
`proceeding.30 By contrast, if the merits of the grounds raised in the petition
`
`are a closer call, then that fact has favored denying institution when other
`
`factors favoring denial are present.31 This is not to suggest that a full merits
`
`analysis is necessary to evaluate this factor.32 Rather, there may be strengths
`
`
`29 Illumina, IPR2019-01201, Paper 19 at 8 (PTAB Dec. 18, 2019)
`(instituting when “the strength of the merits outweigh relatively weaker
`countervailing considerations of efficiency”); Facebook, Inc. v. BlackBerry
`Ltd., IPR2019-00925, Paper 15 at 27 (PTAB Oct. 16, 2019) (same); Abbott
`Vascular, IPR2019-00882, Paper 11 at 29‒30 (same); Comcast Cable
`Commnc’ns., LLC v. Rovi Guides, Inc., IPR2019-00231, Paper 14 at 11
`(PTAB May 20, 2019) (instituting because the proposed grounds are
`“sufficiently strong to weigh in favor of not denying institution based on
`§ 314(a)”).
`
`30 Were a final judgment entered on the patentability issues in the parallel
`proceeding, the parties may jointly request to terminate the PTAB
`proceeding in light of the fully resolved parallel proceeding. See 37 C.F.R.
`§ 42.72.
`
`31 E-One, IPR2019-00162, Paper 16 at 8, 13, 20 (denying institution based
`on earlier district court trial date, weakness on the merits, and the district
`court’s substantial investment of resources considering the invalidity of the
`challenged patent).
`
`32 Of course, if a petitioner fails to present a reasonable likelihood of
`prevailing as to unpatentability of at least one challenged claim, then the
`Board may deny the petition on the merits and may choose not to reach a
`patent owner’s discretionary denial arguments.
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`IPR2020-00019
`Patent 8,843,125 B2
`
`or weaknesses regarding the merits that the Board considers as part of its
`
`balanced assessment.33
`
`C. Other Considerations
`
`Other facts and circumstances may also impact the Board’s discretion
`
`to deny institution. For example, factors unrelated to parallel proceedings
`
`that bear on discretion to deny institution include the filing of serial
`
`petitions,34 parallel petitions challenging the same patent,35 and
`
`considerations implicated by 35 U.S.C. § 325(d).36 The parties should
`
`explain whether these or other facts and circumstances exist in their
`
`proceeding and the impact of those facts and circumstances on efficiency
`
`and integrity of the patent system.
`
`III. ORDER
`
`The panel requests that the parties submit supplemental briefing, as
`
`set forth below, to present on the record facts in this case relevant to the
`
`factors discussed above. The supplemental briefing may be accompanied by
`
`
`33 See id. at 13–20 (finding weaknesses in aspects of petitioner’s challenges).
`
`34 See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00064, Paper 10
`(PTAB May 1, 2019) (precedential); Valve Corp. v. Elec. Scripting Prods.,
`Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018); Gen. Plastic Indus.
`Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6,
`2017) (precedential as to § II.B.4.i).
`
`35 TPG at 59‒61.
`
`36 See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte
`GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (discussing two-part
`framework for applying discretion to deny institution under 35 U.S.C.
`§ 325(d)).
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`16
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`IPR2020-00019
`Patent 8,843,125 B2
`
`documentary evidence in support of any facts asserted in the supplemental
`
`briefing, but may not be accompanied by declaratory evidence.
`
`Accordingly, it is
`
`ORDERED that Petitioner is authorized to file a reply to the
`
`Preliminary Response, no more than ten (10) pages and limited to addressing
`
`the issue of discretionary denial under 35 U.S.C. § 314(a), by March 27,
`
`2020; and it is
`
`FURTHER ORDERED that Patent Owner is authorized to file a
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`sur-reply to Petitioner’s reply, no more than ten (10) pages and limited to the
`
`issue of discretionary denial under 35 U.S.C. § 314(a), by April 3, 2020.
`
`
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`
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`IPR2020-00019
`Patent 8,843,125 B2
`
`For PETITIONER:
`
`Travis Jensen
`K. Patrick Herman
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`T61PTABDocket@orrick.com
`P52PTABDocket@orrick.com
`Apple-Fintiv_OHS@orrick.com
`
`For PATENT OWNER:
`
`Jonathan K. Waldrop
`Rodney R. Miller
`John W. Downing
`KASOWITZ BENSON TORRES LLP
`jwaldrop@kasowitz.com
`rmiller@kasowitz.com
`jdowning@kasowitz.com
`
`
`
`
`
`
`18
`
`