Resources

PTAB Tracker

April 20, 2021

Sotera Wireless, Inc. v. Masimo Corp., Case IPR2020-01019, Paper 12

Petitioner Sotera petitioned for inter partes review nearly twelve months after Patent Owner Masimo filed a patent infringement suit against Sotera in the Southern District of California. In its preliminary response to the petition, Masimo argued for discretionary denial of institution under Fintiv based on the parallel district court proceeding. Sotera, on leave from the Board, filed a reply to the preliminary response highlighting a broad stipulation “not to pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR.” Considering the stipulation 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—Neutral

“Because the District Court has not ruled on the pending motion to stay, we determine that this factor does not weigh for or against denying institution in this case.” (Paper 12 at 14)

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

“Here, the trial is scheduled to begin around the same time as our deadline to reach a final decision. Thus, we find that this factor does not weigh for or against denying institution in this case.” (Paper 12 at 15)

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

“[A]lthough the parties and the District Court have invested some effort in the parallel proceeding to date, further effort remains to be expended in this case before trial. The facts here are similar to those in both recent Board informative decisions [i.e., Fintiv and Sand Revolution].” (Paper 12 at 16)

“Based on the facts present here, we find that Petitioner’s explanation for the timing of the Petition is reasonable, notwithstanding the closeness to the statutory deadline, particularly in view of the large number of patents and claims challenged in this and Petitioner’s other related petitions for inter partes review, as well as the increased difficulty in preparing the Petitions due to concurrent office closures [relating to COVID-19].” (Paper 12 at 17)

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

“Petitioner’s stipulation here mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions. . . Importantly, Petitioner broadly stipulates to not pursue ‘any ground raised or that could have been reasonably raised.’” (Paper 12 at 19)

“Petitioner’s broad stipulation ensures that an inter partes review is a ‘true alternative’ to the district court proceeding. . . Thus, we find that this factor weighs strongly in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).”

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

“Petitioner and Patent Owner acknowledge the parties are the same in the inter partes proceeding and in the parallel proceeding. . . Thus, this factor supports denying institution.” (Paper 12 at 19)

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

“[O]n this preliminary record, Petitioner has met its burden of demonstrating a reasonable likelihood that it would prevail in showing that claims of the [challenged] patent are unpatentable.” (Paper 12 at 20)

Takeaway

A broad contingent stipulation to forego invalidity grounds in district court that were “raised or could have been reasonably raised in an IPR” addresses the concerns in Fintiv of “duplicative efforts and potential conflicting decisions.” (Paper 12 at 18-19) Accordingly, the Board weighs such a stipulation “strongly” in favor of institution, particularly under the Factor 4 inquiry of overlapping issues in parallel proceedings.

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