On March 18, 2022, the Patent Trial and Appeal Board of the United States Patent and Trademark Office exercised its discretion under 35 U.S.C. § 314(a) to deny institution of a petition for inter partes
review filed by Google LLC challenging a patent asserted against it in an ITC investigation and a parallel district court case. Google LLC v. EcoFactor, Inc.
, IPR2021-01578, Paper 9 (PTAB Mar. 18, 2022). The PTAB’s denial relied primarily on the late stage of the ITC investigation.
35 U.S.C. § 314(a) provides that an IPR may not be instituted unless the petition “shows there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.” This provision has been interpreted to provide the PTAB with complete discretion to deny institution. See, e.g.
, Cuozzo Speed Techs., LLC v. Lee
, 136 S. Ct. 2131, 2140 (2016) (finding that the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and noting there is “no mandate to institute review” under Section 314(a)).
In Apple Inc. v. Fintiv
, case no. IPR2020-00019 (PTAB designated precedential May 5, 2020), the PTAB set forth six non-exclusive factors to consider when considering whether to exercise Section 314(a) discretion due based on co-pending proceedings:
- whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted;
- proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision;
- investment in the parallel proceeding by the court and the parties;
- overlap between issues raised in the petition and in the parallel proceeding;
- whether the petitioner and defendant/respondent in the parallel proceeding are the same party; and
- other circumstances that impact the Board’s exercise of discretion, including the merits.
The dispute between the parties largely amounted to whether the focus of the Fintiv
analysis should be the stayed district court cases (as Petitioner Google argued) or the ITC investigation (as Patent Owner EcoFactor argued). The PTAB sided with the Patent Owner. Despite the existence of parallel district court proceedings (which typically are considered as part of the Fintiv
analysis), the PTAB elected to “focus exclusively on the ITC investigation” for all six Fintiv
Against this background, in favor of denying institution, there was no evidence of a stay (factor 1), the evidentiary hearing had concluded, and the ITC investigation was set to reach its final decision “more than half a year before” a final written decision would issue in the IPR (factors 2 and 3) and the parties were the same in the IPR and ITC investigation (factor 5). In slight favor of institution, the IPR Petition challenged additional claims and certain prior art was different (factor 4). The Board found factor 6 neutral, rejecting Petitioner’s argument that Patent Owner may assert the claims in district court, regardless of the outcome of the ITC investigation. Weighing these factors, the PTAB denied institution.
This decision continues the trend—post-Fintiv
—to deny institution based on a late-stage parallel ITC investigation. It is notable given that Fintiv
instructs a wholistic approach, yet the PTAB rejected Petitioner’s reliance on the stayed district court proceedings, choosing to focus “exclusively on the ITC investigation.”