In an institution decision following the USPTO’s withdrawal of its Fintiv Memo, the board addressed discretionary denial of an IPR under Fintiv in view of a parallel ITC investigation. The board noted it would not consider the now-rescinded June 2022 memo from then-director Vidal which instructed that the PTAB would not deny institution of an IPR or PGR under Fintiv when the request is based on a parallel ITC investigation. The board conducted a Fintiv analysis in view of the ITC investigation, but ultimately determined that discretionary denial was not warranted in this particular situation.
The patent at issue was directed to a photosensitive device capable of detecting visible and infrared electromagnetic radiation. Petitioner filed a petition for IPR challenging the patentability of several claims. Prior to the IPR, patent owner had asserted the patent against petitioner at the ITC and in district court. The ITC investigation was ongoing, but, as is customary, the district court case was stayed pending the conclusion of the ITC investigation. Patent owner argued in the IPR that the board should deny the petition under Fintiv because institution would incur significant inefficiencies and risk inconsistent outcomes. The board analyzed each of the six Fintiv factors in turn.
The board determined that factors two, three, and five weighed in favor of discretionary denial. In reaching that finding, the board noted that the ITC investigation had a target completion date more than three months before the statutory deadline for a final written decision in the IPR, the ITC had already completed substantial work, and the parties were the same in the IPR and the ITC investigation. Factor one—whether there is a stay in the parallel proceedings—was neutral. Although there was a stay in the district court, there was no stay for the ITC investigation. The board noted that the lack of a stay for the ITC investigation elevated the importance of factor four, which concerns overlap between issues raised in the petition and parallel proceedings.
Regarding factor four, patent owner initially argued that the validity issues presented were nearly identical at the PTAB and in the ITC. Petitioner responded by withdrawing a ground from the IPR petition that overlapped with the ITC investigation and stipulating that “if the [b]oard institutes this IPR on the two remaining applicable grounds, petitioner will not assert invalidity in parallel litigation using as primary or combination references any of the references asserted in those grounds.” The board thereafter determined that the record no longer supported that the ITC would adjudicate the invalidity grounds raised in the petition and therefore factor four weighed against discretionary denial. The board also determined that “other considerations” under factor six weighed against denial, including that the petition’s merits were strong and that the narrowing of the petition minimized the burden on the parties and the board.
In considering the factors as a whole, the board ultimately concluded that the strength of the merits and lack of overlap in proceedings outweighed any potential inefficiencies and declined to exercise its discretion in this situation.
Practice Tip:
In light of the withdrawal of the June 21, 2022 Fintiv Memo, patent owners faced with an IPR should now consider arguing for discretionary denial under Fintiv where there is a parallel ITC investigation. Conversely, petitioners seeking to avoid discretionary denial should consider taking steps to minimize overlap between unpatentability grounds in a petition and invalidity positions taken in parallel proceedings.
Samsung Elecs. Co., Ltd. v. Sionyx, LLC, IPR2024-01431, Paper 21 (P.T.A.B. Apr. 10, 2025)
