PTAB Emphasizes Expert Availability and Clarifies Fintiv Inquiry for Prior District Court Cases

January 10, 2022

The US Patent Trial and Appeal Board on December 23, 2021, instituted an inter partes review even though an unrelated party had already unsuccessfully challenged the validity of the patent in district court. In the decision granting institution, the board found unpersuasive arguments that the case should be discretionarily denied based on declarations of experts who were not presently engaged in the proceeding and a prior unsuccessful invalidity challenge in the other litigation.


In OpenSky Industries v. VLSI Technology, IPR2021-01064, Paper 17 (Dec. 23, 2021), the patent owner, VLSI Technology, argued that petitioner OpenSky Industries relied on expert declarations filed in another inter partes review (IPR) proceeding, making those declarations hearsay for this proceeding if the de clarants could not be available for cross-examination. The patent owner argued that the petitioner would be unable to make available for deposition at least one of the declarants because of an asserted exclusive agreement between the declarant and another party, Patent Quality Assurance (PQA), that forbid the declarant from working for the petitioner. However, the Patent Trial and Appeal Board (PTAB) observed that PQA had since corrected the statement, noting that it had “erroneously claimed exclusivity with [the declarant].”

The board questioned why the petitioner failed to seek the cooperation of the other expert before submitting the declaration. It also noted that an exclusive agreement between an expert and PQA did support discretionary denial in another case between the two parties, OpenSky Industries v. VLSI Technology, IPR2021-01056, but reached a “different decision based on different facts” in this case. In the other case, there was an exclusive agreement between PQA and a different expert that would have effectively precluded cross-examination. The board denied institution in that case, acknowledging that “expert testimony is not necessary in every case,” but noting the petition’s reliance on the expert testimony and that the petitioner “has not explained why such support is unnecessary.”


The factors set out in Apple v. Fintiv, IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential), are criteria that PTAB has used to evaluate whether to deny institution based on parallel litigation involving the challenged claims of a patent. In OpenSky Industries, the patent owner argued that the board should deny institution of the IPR based on the Fintiv factors. In particular, it contended that because a jury had determined in another IPR involving an unrelated defendant that the claims were valid, that the IPR should be denied pursuant to the Fintiv factors.

The board noted that (1) the “only invalidity basis presented to the jury does not overlap with the grounds” of the current IPR, and (2) the petitioner was not a party in the other litigation. It emphasized Fintiv’s language that the PTAB generally disfavors discretionary denial when the litigation does not involve the petitioner, unless the “issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal” (Fintiv, IPR2020-00019, Paper 11, 13-14).

The board explained that because the VLSI Technology matter did not resolve the issues presented in this IPR, that there was no chance of an inconsistent outcome, and, therefore, the board would not be “redoing the work of another tribunal.” The board also rejected the patent owner’s argument that the other litigation parties and the district court “invested enormous amounts of time and money litigating validity and infringement issues relating to the ‘759 patent” (Prelim. Resp. 17). Notably, the board disagreed with the notion that “prevailing in litigation against one party should insulate a patent owner from challenge by a different party based on grounds that were not resolved in the litigation.”


This PTAB decision highlights two key considerations in the IPR process: (1) to avoid a hearsay challenge, petitioners should ensure that they engage any experts in their case if they intend to rely on those experts’ declaration(s) from other cases; and (2) patent owners should carefully consider whether sufficient similarity exists between the parties or the grounds before arguing that the Fintiv factors support a discretionary denial.


If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Dion M. Bregman (Silicon Valley) or Theodore A. Rand (Silicon Valley), or any of the following lawyers from Morgan Lewis’s post-grant proceedings team:

Joshua M. Dalton

Century City
Andrew V. Devkar

Jason C. White

C. Erik Hawes
Rick L. Rambo

Louis W. Beardell, Jr.

San Francisco
Brent A. Hawkins

Silicon Valley
Andrew J. Gray IV
Ahren C. Hsu-Hoffman
Michael J. Lyons

Washington, DC
Jeffrey G. Killian, Ph.D.
Robert Smyth, Ph.D.