In a relevant recent development, the PTAB (Patent Trial and Appeal Board) granted the institution of an Inter Partes Review (IPR) in light of several parallel district court proceedings regarding the same patent. The Board was not persuaded by the Patent Owner’s argument that the petitioner’s “conflicting” stances regarding claim construction within the district court proceedings and the IPR application bore relevance to Fintiv factor 3. This showcases the emphasis placed on the degree of investment over substantive debates in influence Fintiv’s third factor. The mentioned case was CrowdStrike, Inc., v Webroot Inc., IPR2023-00126, Paper 9, at 10 and was decided on May 5, 2023. (Read More)
As legal professionals are aware, the PTAB’s analysis focuses on whether the advanced stage of another proceeding, where the same claim is at issue, places a burden on the patent owner, or the economy, causing a circumstance in which the IPR should be denied. This latest case provides important insights into how the PTAB weights these concerns.
Notably, the PTAB demonstrated that the primary consideration in its assessment of the Fintiv factors is rooted in the degree of overlap between the disputes and the parties’ investment in the judicial proceeding, rather than the substantive arguments. The PTAB flatly rejected the Patent Owner’s contention that the contrasting assertions made by the petitioner about claim construction in the district court proceedings and the IPR application had an impact on Fintiv factor 3.
This underlines the importance of the extent of investment in a parallel proceeding as a central criterion within the PTAB’s evaluation of whether to enable institution of an IPR. Substantial implications follow for patent owners and petitioners alike, who must factor the degree of investment into their strategies, more than ever, when dealing with simultaneous actions.