A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Snap, Inc. v. SRK Technology LLC, No. IPR2020-00820 (Oct. 21, 2020) (designated precedential as to § II.A on Dec. 17, 2020). Opinion by Droesch, joined by Braden and Boudreau.
After SRK sued Snap for patent infringement in the U.S. District Court for the Central District of California, Snap filed a petition for IPR challenging several of the patent claims. Relying on the parallel district court action, SRK argued that the Patent Trial and Appeal Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a). Addressing the six factors outlined in Fintiv, the Board determined that each factor either weighed in favor of institution or was neutral. Thus, the Board declined to exercise its discretion to deny institution of the IPR.
Addressing each of the Fintiv factors in turn, the Board first observed that a stay had been granted in the parallel district court proceeding, which “weighs strongly against exercising discretion to deny institution.” Moreover, the district court case was still in its early stages. For example, “importantly” the district court had not yet issued orders on claim construction. Also, the issues raised in the IPR petition and in the parallel court proceeding did not overlap, since the prior art being applied in the two proceedings was different. Further, issues relating to patentability could be simplified for the district court if the IPR was allowed to proceed. Balancing all six of the factors, the Board held that they weighed against exercising discretion to deny institution under § 314(a).
Sotera Wireless, Inc. v. Masimo Corp., No. IPR2020-01019 (Dec. 1, 2020) (designated precedential as to § II.A on Dec. 17, 2020). Opinion by Chagnon, joined by Cocks and Wieker.
After Masimo filed a patent infringement complaint against Sotera in the U.S. District Court for the Southern District of California, Sotera filed an IPR petition. Masimo argued that the Patent Trial and Appeal Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a). The Board disagreed.
The Board analyzed each of the six Fintiv factors, explaining that four of the factors “do not weigh for or against denying institution.” Next, addressing the factor concerning the “investment in the parallel proceeding by the court and parties,” the Board noted that the parties and court had made a “relatively limited investment in the parallel proceeding to date.” Also, “the timing of the Petition was reasonable.” Thus, the factor weighed in favor of not exercising discretion to deny institution.
Finally, addressing the “overlap between issues raised in the petition and in the parallel proceeding,” the Board ruled that this factor weighed “strongly in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).” Sotera had filed in the district court a “broad stipulation” agreeing that if the Board institutes IPR, Sotera would not pursue in the district court “the specific grounds” raised in the IPR or “any other ground … that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications).”
The Board found that Sotera’s stipulation “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” The stipulation also ensured that the IPR “is a ‘true alternative’ to the district court proceeding.”