PTAB Considers Interim Fintiv Guidance in Refusing to Exercise Discretion to Deny Institution

July 18, 2022

The Patent Trial and Appeal Board recently granted the institution of an inter partes review in Samsung Electronics Co. v. Staton Techiya, LLC, despite the existence of a parallel proceeding in the US District Court for the Eastern District of Texas.

The Patent Trial and Appeal Board (PTAB) based its decision partly on consideration of the Interim Fintiv Guidance released by US Patent and Trademark Office’s (USPTO) Director Kathi Vidal on June 21, 2022.[1] The Interim Fintiv Guidance provides further clarification regarding application of the PTAB’s precedential case of Apple v. Fintiv, IPR2020-00019, Paper 11 (Mar. 20, 2020).

The Fintiv factors, set out in Apple v. Fintiv, provide a set of criteria that the PTAB uses to evaluate whether to discretionally deny institution of an inter partes review (IPR) or post-grant review (PGR) on efficiency grounds (and primarily factors related to parallel district court litigation). As noted in one of our recent LawFlashes, the guidance sets out several instances in which the PTAB will not discretionally deny an IPR or PGR, and seeks to better align the Fintiv analysis with the intended benefits of the AIA.

The PTAB found the first Fintiv factor, whether a stay exists or is likely to be granted by the US District Court for the Eastern District of Texas (District Court), to be neutral given that it was unknown whether the District Court would grant a motion to stay.


The Board next considered the second Fintiv factor, the proximity of the court’s trial date to the Board’s projected statutory deadline, which required a more thorough analysis of the guidance. The Board observed that the District Court had set a date for jury selection of June 26, 2023, approximately two to three weeks before the prospective statutory deadline for a final written decision in the IPR. The Board cited the guidance, noting that the “[p]arties may present evidence regarding the most recent statistics on median time-to-trial for civil actions in the district court in which the parallel litigation resides.”[2] Samsung Electronics Co. (the Petitioner) cited the median time-to-trial of the District Court as 24.2 months for the year ending March 31, 2022.

However, Staton Techiya LLC (the Patent Owner) argued that the Board need not consider the median time-to-trial statistics because “the scheduled trial date will not be changed absent good cause.” The Patent Owner also argued that the median time-to-trial based on the year ending on March 31, 2022, should not be used in determining the median time-to-trial. It argued that the most recent statistics reflect a slightly longer time-to-trial than in the previous five years, given “measures taken in response to the COVID-19 pandemic.”

The Board disagreed with all the Patent Owner’s arguments and noted that the guidance directs the PTAB to consider “the most recent statistics on median time-to-trial for civil actions in the district court in which litigation resides,” which is 24.2 months.[3]


The Board considered the remaining Fintiv factors, finding no factor favoring denial of institution of the IPR. For the third Fintiv factor, relating to the amount of investment in the parallel proceeding, the Board observed that the District Court had not considered the scope, validity, or infringement of the patent-at-issue and that the discovery process was still in its early stages. It ultimately disagreed with the Patent Owner that the investment in the District Court proceeding was sufficiently significant to weigh in favor of denying the institution of the IPR.

The Board next looked to the fourth Fintiv factor, concerning the overlap between issues raised in the petition and the parallel proceeding. The Patent Owner argued that there was significant overlap between the issues presented in the IPR petition and the issues at the District Court and that it would be unfair for the Petitioner to show inconsistent claim construction positions in the respective proceedings. The Petitioner replied that it would provide a stipulation similar to that in Sand Revolution [4]—that “if IPR is instituted, [Petitioner] will not pursue any of the same invalidity grounds in the [District Court Litigation].” The Patent Owner argued that such a stipulation is “less helpful” in avoiding overlap and the potential for conflicting determinations than other, more broadly worded stipulations, such as a Sotera stipulation.[5]

As we previously noted in the LawFlash mentioned above, the guidance directs the PTAB not to deny institution when a party makes a Sotera stipulation. While the Board noted that the narrowness of the Petitioner’s stipulation diminished its weight, it still caused the fourth Fintiv factor to weigh against denial.[6]

The Board noted that the Petitioner and the defendant in the proceeding at the District Court were the same parties, weighing against discretionary denial under the fifth Fintiv factor. And for the sixth Fintiv factor, a catch-all for other circumstances that may impact the Board’s exercise of discretion, the Board considered its discussion of the merits in the Order, finding that the Petitioner had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. It should be noted that when the merits of the case are deemed compelling under the sixth Fintiv factor, the guidance directs the PTAB not to deny institution based on Fintiv.


As this was the first PTAB proceeding applying the new Interim Fintiv Guidance, parties will likely continue to test the bounds of Fintiv and this guidance. Over the past few months, the Board has been drastically rolling-back the pace of discretionary denials where there is co-pending litigation (from a rate of almost 40% of all institution decisions where Fintiv factors were considered in 2020, to single digits in 2022), and this new Interim Fintiv Guidance will likely lead to even fewer discretionary denials going forward.


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.

[1] Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.

[2] Id. at 8 (citing In re Genentech, Inc., 566 F.3d 1338, 1347 (Fed. Cir. 2009)).

[3] Id. at 8-9.

[4] Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 (June 16, 2020) (informative).

[5] Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential). In Sotera, the Board explained that if the petitioner stipulates not to pursue “any ground raised or that could have been reasonably raised” in the parallel district court case, that the fourth Fintiv factor weighs strongly against denial of institution.

[6] See also, Google LLC v. Ikorongo Tech. LLC, IPR2021-00204, Paper 13 at 10-12 (PTAB June 7, 2021).