PTAB designates the following cases as precedential:
Sotera Wireless, Inc. v. Masimo Corp. (Dec. 1, 2020) and Snap, Inc. v. SRK Tech. LLC (Oct. 21, 2020) that apply the Fintiv factors. In Sotera, the decision explains that the petitioner's broad stipulation not to pursue in district court any ground that it raised, or could have raised, in the IPR weighs strongly in favor of institution. In Snap, the decision explains that a district court stay that would remain in place until an IPR final written decision weighs strongly in favor of institution. The Fintiv factors used to decide whether to deny institution under 35 USC 314(a) are: (1) whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; (2) proximity of the court's trial date to Board's projected statutory deadline for a final written decision; (3) investment in parallel proceeding by court and parties; (4) overlap between issues raised in petition and in parallel proceeding; (5) whether petitioner and defendant in parallel proceeding are the same party; and (6) other circumstances that impact Board's exercise of discretion, including the merits.
RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020), SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11(Oct. 6, 2020), and Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020). In RPX, the petitioner was time-barred because the petitioner's client was an unnamed real party-in-interest that had been served with an infringement complaint more than one year before filing the petition. In SharkNinja, decision held that while petitioners must identify any real parties-in-interest and must do so in good faith, the Board does not need to resolve a dispute regarding a possible real party-in-interest if it would not impact the Board's institution decision. In Apple, the decision applies the factors set forth in General Plastic to a copycat petition that the petitioner filed against the challenged patent after its first petition was denied institution.
Sotera Wireless, Inc. v. Masimo Corp. (Dec. 1, 2020) and Snap, Inc. v. SRK Tech. LLC (Oct. 21, 2020) that apply the Fintiv factors. In Sotera, the decision explains that the petitioner's broad stipulation not to pursue in district court any ground that it raised, or could have raised, in the IPR weighs strongly in favor of institution. In Snap, the decision explains that a district court stay that would remain in place until an IPR final written decision weighs strongly in favor of institution. The Fintiv factors used to decide whether to deny institution under 35 USC 314(a) are: (1) whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; (2) proximity of the court's trial date to Board's projected statutory deadline for a final written decision; (3) investment in parallel proceeding by court and parties; (4) overlap between issues raised in petition and in parallel proceeding; (5) whether petitioner and defendant in parallel proceeding are the same party; and (6) other circumstances that impact Board's exercise of discretion, including the merits.
RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020), SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11(Oct. 6, 2020), and Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020). In RPX, the petitioner was time-barred because the petitioner's client was an unnamed real party-in-interest that had been served with an infringement complaint more than one year before filing the petition. In SharkNinja, decision held that while petitioners must identify any real parties-in-interest and must do so in good faith, the Board does not need to resolve a dispute regarding a possible real party-in-interest if it would not impact the Board's institution decision. In Apple, the decision applies the factors set forth in General Plastic to a copycat petition that the petitioner filed against the challenged patent after its first petition was denied institution.
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