The Patent Trial and Appeal Board made two more precedential decisions where the Board instituted reviews of patents involved in District Court litigation. Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 (PTAB December 1, 2020)(precedential, designated December 17, 2020); and Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 (PTAB October 21, 2020)(precedential, designated December 17, 2020). These Board decisions provide further guidance on the application of the Apple v. Fintiv factors where the Board examines the status of a co-pending District Court litigation relating to the challenged patent in deciding whether to exercise its discretion to deny institution. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB March 20, 2020).

In Sotera Wireless, Inc. v. Masimo Corporation, the Board instituted a review noting that Sotera filed a stipulation that it “will not pursue in [the District Court] the specific grounds [asserted in the inter partes review], or on any other ground … that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications).” Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 at 13-14.  

The Board followed Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, noting that the “stipulation here mitigates any concerns of duplicative efforts between the District Court and the Board, as well as concerns of potentially conflicting decisions … [and] such a broad stipulation better addresses concerns of duplicative efforts and potentially conflicting decisions in a much more substantial way … ensur[ing] that an inter partes review is a ‘true alternative’ to the District Court proceeding.” Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 at 14 citing Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative).

In Snap, Inc. v. SRK Technology LLC, the Board instituted a review noting that “the District Court’s stay of the litigation pending denial of institution or a final written decision allays concerns about inefficiency and duplication of efforts … [and] weigh[s] strongly against exercising discretion to deny institution under NHK.” Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 at 9.