Another Day, Another 314(a) Discussion

On the heels of its precedent of a week or so back, the PTAB is adding more to the swirling hairball known as the “Fintiv factors.” First, the Board has clarified that agreeing to IPR estoppel proactively (before institution) and not pursuing such grounds in the parallel infringement proceeding, is a strong factor in favor of institution.

Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 (Dec. 1, 2020) (precedential as to § II.A) (here)

In addressing the Fintiv factors, Sotera explains that the petitioner’s broad stipulation not to pursue in district court any ground that it raised, or could have raised, in the inter partes review weighs strongly in favor of institution. (I don’t see much downside to such a stipulation as you are far more likely to succeed at the PTAB on such grounds anyway.)

Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 (Oct. 21, 2020) (precedential as to § II.A) (here)

Snap explains that a district court stay that would remain in place until an inter partes review final written decision weighs strongly in favor of institution. (Of course, if the case is stayed I am not sure why the Fintiv factors would even be applied since there is no longer a fixed trial date or any efficiency consideration.)

Scott A. McKeown is an author of the Patents Post Grant