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April 20, 2021

Snap Inc. v. SRK Tech. LLC., Case IPR2020-00820, Paper 15

Petitioner Snap petitioned for inter partes review roughly twelve months after Patent Owner SRK Tech filed a patent infringement suit against Snap in the Central District of California. In its preliminary response to the petition, SRK Tech argued for discretionary denial of institution under Fintiv based on the parallel district court proceeding. Snap, on leave from the Board, filed a reply to the preliminary response highlighting the fact that “[t]he district court litigation . . . is stayed and administratively closed.” Considering the stay and other relevant facts, the Board weighed the Fintiv factors in favor of instituting review.

A synopsis of the Board’s analysis on each of the Fintiv factors is provided below:

Factor 1: whether a stay exists or is likely to be granted if a proceeding is instituted—Strongly Favors Institution

“[T]he District Court’s stay of the litigation pending denial of institution or a final written decision allays concerns about inefficiency and duplication of efforts…Accordingly, consideration of the first Fintiv factor weighs strongly against exercising discretion to deny institution.” (Paper 15 at 9)

Factor 2: proximity of the court’s trial date to the Board’s projected statutory deadline—Neutral

“Although Patent Owner asserts that, should institution be denied, ‘it is likely that the District Court Litigation would resume and that trial would be held at or before the date on which a final written decision would be due,’ we agree with Petitioner that this amounts to ‘unfounded speculation as to how the court might proceed.’” (Paper 15 at 9)

Factor 3: investment in the parallel proceeding by the court and parties—Favors Institution

“Where the District Court has not issued claim construction orders and the discovery process is not yet complete, the remaining investment of time and effort likely necessary to bring co-pending litigation to trial appears to far outweigh that which has already been invested.” (Paper 15 at 11)

“We find that the Petition was filed neither expeditiously nor with delay because, although it was not filed promptly after Petitioner became aware of the claims being asserted in the invalidity contentions . . ., it was not filed in close proximity to any response by Patent Owner to the invalidity contentions because Patent Owner did not file a response prior to the stay of the proceedings.” (Paper 15 at 12)

Factor 4: overlap between issues raised in the petition and in the parallel proceeding—Favors Institution

“We agree with Petitioner that the invalidity contentions do not include the [Prior Art A] and [Prior Art B] references. . . Nonetheless, we acknowledge that [Prior Art C] is explicitly included while [Prior Art D] is implicitly included in the invalidity contentions, as argued by Patent Owner. . . The [Prior Art A] reference is not included in the invalidity contentions, but is used in the Petition for every proposed challenge to patentability. Therefore, we find the prior art and arguments included in the Petition are materially different than those presented in the District Court.” (Paper 15 at 15)

“Based on the aforementioned material differences between the challenges to patentability set forth in the Petition compared to the invalidity contentions before the District Court, as well as the stay of the parallel District Court proceeding, the considerations of the fourth Fintiv factor weigh against exercising discretion to deny institution.”

Factor 5: whether the petitioner and the defendant in the parallel proceeding are the same party—Neutral or Slight Favors Denial

“In consideration of the fact that the parallel District Court proceeding is stayed, and there is not substantial overlap between the invalidity contentions and the Petition challenges, we regard the consideration of the fifth Fintiv factor as neutral or, at most, weighing slightly in favor of exercising discretion to deny institution.” (Paper 15 at 16)

Factor 6: other circumstances and considerations that impact the Board’s exercise of discretion, including the merits—Favors Institution

“[T]he sixth Fintiv factor may include consideration of the merits. As explained in the detailed analysis below, we find that the merits of Petitioner’s patentability challenges appear to be strong at this stage of the proceeding.” (Paper 15 at 18)

Takeaway:

A stay of the parallel proceeding, particularly one initiated prior to the close of discovery, weighs strongly in favor of institution under the Fintiv factors. The stay directly answers the inquiry of Factor 1, and its effect also permeates through Factors 2, 3, and 4.

Author

Kenneth Darby | Principal | Austin, TX

Kenneth Darby is a principal in the Austin office of Fish & Richardson P.C. Mr. Darby’s practice is largely focused on post-grant proceedings at the Patent Trial and Appeal Board (PTAB), where he has successfully represented both patent owners and petitioners... Read More