Score one for the patentees! In its March precedential opinion Apple v. Fintiv, the Patent and Trial Appellate Board identified a set of factors to be weighed when determining whether an inter partes review should be instituted when a related, parallel proceeding is pending in the district court or before the International Trade Commission. Finitv, IPR2020-00019, Paper 11 (PTAB March 20, 2020) (precedential, designated May 5, 2020). The six factors enumerated in Fintiv aim to balance efficiency, fairness, and patent quality. They also create a process for a patentee to end an IPR before institution in those instances where similar issues are set to be decided between the same parties within a similar time frame, but in a different tribunal setting.

Before to the Fintiv decision, the case law covering discretionary denials of IPR petitions was nascent and centered around NHK Spring v. Intri-Plex Techs., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential, designated May 7, 2019)). In NHK, the PTAB denied institution based on efficiency grounds because the petitioner was pursuing the same invalidity challenges in a parallel district court proceeding. Importantly, the PTAB made the decision to deny institution based in part on the fact that a validity determination would be reached by the district court before a final written decision would be rendered by the PTAB.

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