Recently, in Google LLC v. Ikongoro Tech. LLC, the Patent Trial and Appeal Board (“the Board” or “PTAB”) instituted inter partes review after it had previously denied the institution of such a review due to the pendency of related district court litigation in the Western District of Texas—a case which was subsequently transferred to the Northern District of California by the Federal Circuit granting mandamus relief.  The Board’s decision casts light on the interplay between the PTAB’s discretion to deny institution of inter partes review and the increased focus on transfers out of the Western District of Texas.

Background

NHK/Fintiv Framework

Under its precedential decisions in NHK Spring v. Intri-Plex and Apple v. Fintiv, the Board can deny institution of an inter partes review when pending district court litigation involves the same patent, in order to avoid wasting resources and producing conflicting decisions.  In deciding whether to deny institution of inter partes review, the Board considers “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.”

Transfers out of the Western District of Texas

In recent years, the Western District of Texas has seen a sharp rise in the number of patent litigation cases filed there. According to one estimate, approximately 25% of all patent litigation cases are now handled by this particular district.  (Letter from Senators Leahy and Tillis) Alongside this increase in filings is an increase in requests to transfer venue out of Texas.  And increasingly often the Federal Circuit is stepping in: in 2020 and 2021 alone, it granted mandamus relief ordering transfer on 15 occasions. (Letter from Senators Leahy and Tillis)

 District Court Proceedings

In March 2020, the plaintiff filed two suits, one against Samsung and one against LG, in the Western District of Texas, accusing them of infringing the plaintiff’s patents related to “a system for identifying media items,” such as music files, “associated with a geographic area.”   In September of that year, both defendants requested that the cases be transferred to the Northern District of California.  The district court denied both requests in March 2021.  In April 2021, each defendant petitioned the Federal Circuit for mandamus relief granting transfer to the Northern District of California—relief which the Federal Circuit granted on June 30.  After transfer, in October 2021, both cases were stayed pending the plaintiff’s appeal of the Federal Circuit’s order.  This stay remains in place.

The Board Denies Institution

In the meantime, Google filed two petitions for inter partes review in November 2020, challenging the validity of one of the patents Samsung and LG stood accused of infringing in the case pending in the Western District of Texas.  Early in June 2021—after the district court had denied the transfer but before the Federal Circuit had issued its order to the contrary—the Board denied institution in light of the pending district court cases.

Applying the NHK/Fintiv factors, the Board determined:

 The district court cases had not been stayed, but it was unclear if they would be in the future, meaning that this factor was neutral.

1. The cases in the Western District of Texas were scheduled to go to trial about three months before the Board would issue its final written decision.

The Board considered if this trial date was likely to change, and concluded it was not:  First, the parties’ motions to transfer venue had already been denied.  And the court’s order governing patent cases emphasized that trials would only be postponed in “extreme situations.”  Therefore, “presuming that there would be delay would be conjecture,” and this factor “somewhat favor[ed]” denying institution of the inter partes review.

3. By the time the petition was considered, the district court had already held the Markman hearing and fact discovery had begun, but the “majority of the work” remained. Again, this “somewhat favored” denial.

4. The petition overlapped significantly with the parallel proceedings: just over three-fourths of the claims Google was challenging were the very same claims the Patent Owner (the plaintiff in the district court cases) was asserting against Samsung and LG. The prior art references cited overlapped as well. On the other hand, Samsung and LG stipulated that, should the Board institute the inter partes review, they would not challenge the patents on the same grounds in the district court.  Therefore, the Board found that this weighed against denying institution, but only “marginally.”

5. With respect to the issue of the commonality of the parties, neither LG nor Samsung had petitioned the Board for inter partes review, and Google was not a party to either district court case. However, it was undisputed that Google, LG, and Samsung were real parties-in-interest.  Therefore, the Board found that this factor weighed in favor of denying institution of inter partes

6. Finally, the Board found that neither Google nor the Patent Owner had presented a particularly strong case for or against institution, respectively, making this factor neutral.

Viewing these factors holistically, the Board denied institution of inter partes review.

The Board Reconsiders

Google requested rehearing in light of the transfer of the district court cases to the Northern District of California and the subsequent stay, and on January 25, 2022, the Board issued its decision.  It found that the first three factors now weighed against denying institution: because the case had been transferred, the trial date would be postponed—and in fact had yet to be scheduled—and the parties had not invested any significant resources into the district court litigation.  Additionally, these cases were stayed.

The analysis under the other three factors remained unchanged.  Viewing these factors holistically, the Board no longer viewed it appropriate to deny institution based on the parallel district court proceedings.  And considering the petitions on the merits, it chose to institute proceedings.

This case demonstrates to both patent owners and accused infringers that decisions to transfer venue can affect not just the district court proceeding but related inter partes reviews—even if the Board has previously denied institution.  We will continue to monitor this situation.

Erin Short, a law clerk at Proskauer, authored this article.