Nov 24, 2023

To print this article, all you need is to be registered or login on Mondaq.com. On March 31, 2023, Zhuhai CosMX Battery Co., Ltd.("Zhuhai") filed a petition for inter partesreview ("IPR") of claims of U.S. Patent No. 11,329,352("the '352 Patent"), assigned to Ningde AmperexTechnology Ltd. ("Amperex"). The '352 Patent relatesto the structure of secondary batteries and is the subject ofparallel litigation in the Eastern District of Texas involving thesame parties. The IPR petition challenged several claims of the'352 Patent as obvious based on various combinations of Chineseand United States patent documents. After pleadings from both parties, the PTAB proceeded to applythe factors enunciated in Apple Inc. v. Fintiv, Inc., IPR2020-00019 (PTAB Mar. 20, 2020) ("the Fintivfactors") to determine whether institution of the IPR wasappropriate in light of the parallel district court litigation .The Fintiv factors are set forth below together with thePTAB's assessment of the respective factor: 1) whether the court granted a stay or evidence exists thatone may be granted if a proceeding is instituted The PTAB found the first Fintiv factor to be neutral,neither favoring nor disfavoring institution. The Board noted thatneither party identified a request for a stay or evidence that astay in the parallel district court proceeding was likely. 2) proximity of the court's trial date to theBoard's projected statutory deadline for a final writtendecision The projected statutory deadline for issuing a final writtendecision would have been October 2024. The parties disputed theprojected trial date of the district court litigation. Zhuhai citedtime-to-trial statistics for the Eastern District of Texas,claiming that trial would occur in June or July 2024 at theearliest. Amperex, however, noted that the court's schedulingorder placed trial eight to nine months before the PTAB's finalwritten decision deadline. The PTAB noted that, at any rate, atrial in the parallel district court litigation occurring monthsbefore the final written decision deadline "weigh[ed] heavilyin favor of discretionary denial." 3) investment in the parallel proceeding by the court andthe parties The PTAB considered that the parties had exchanged infringementand invalidity contentions, scheduled a claim construction hearing,and completed fact discovery and initial expert reports. The PTABdismissed statements made in the petition that contended noinvestment in the parallel proceeding at that time. The pertinenttime period, the decision explained, is "the time of theinstitution decision." The Board thus found that the thirdfactor also heavily favored denial of institution. 4) overlap between issues raised in the petition and in theparallel proceeding Amperex pointed out that the primary prior art referencesasserted in the IPR were also asserted in the invaliditycontentions in the parallel district court litigation. Zhuhairesponded with a stipulation that it would not pursue the sameinvalidity grounds in the district court case that were included inthe IPR. The PTAB noted that certain stipulations can precludediscretionary denial, provided they agree not to pursue the IPRgrounds in a parallel district court proceeding, or any groundsthat could have reasonably been raised in the petition.Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019 (PTABDec. 1, 2020). In contrast to these"Sotera-type" stipulations, Zhuhai'sproffered stipulation did not extend to any ground that could havebeen raised in the petition. Furthermore, the stipulation omittedthe Chinese prior art reference of CN 104157914 A to Wang("Wang"), which was a primary reference for every groundin the petition. Accordingly, the PTAB found that Zhuhai'sproffered stipulation obviated only some concerns of redundancybetween the two proceedings and that the fourth Fintivfactor weighed only "somewhat against denial ofinstitution." 5) whether the petitioner and the defendant in the parallelproceeding are the same party The parallel district court proceeding involves the same partiesas the present IPR. The PTAB noted that the fifth Fintivfactor favors denial of institution if the district court trialwill occur before the Board's final written decision and willfavor institution if the opposite is true. As discussed above, thePTAB determined that the parallel district court litigation wouldlikely precede the final written decision in this case. The Boardthus found that the fifth factor favored denial of institution. 6) other circumstances that impact the Board's exerciseof discretion, including the merits The PTAB acknowledged that the first five Fintivfactors, taken together, favored denying institution. However,where a compelling case for unpatentability is present at theinstitution stage, the sixth factor alone may warrant institution.The PTAB proceeded to assess the merits with respect to obviousnessof each challenged claim. The PTAB found persuasive Amperex'sarguments that there was insufficient motivation to combine theprior art references. Accordingly, the PTAB indicated that thesixth Fintiv factor did not weigh against discretionarydenial. Conclusion The PTAB considered the Fintiv factors holistically,noting that "only factor 4 weighs against discretionarydenial, factor 1 is neutral, and factors 2, 3, and 5 weigh in favorof discretionary denial of institution, with factors 2 and 3weighing heavily in favor." Furthermore, Zhuhai did not submita Sotera-type stipulation or demonstrate compellingevidence of unpatentability, either of which would have rendereddiscretionary denial inappropriate. The PTAB thus exercised itsdiscretion to deny institution of the IPR. Takeaway: The PTAB will consider the Fintiv factors as a wholewhen evaluating the appropriateness of a discretionary denial inlight of a parallel district court proceeding. Even where theevidence otherwise favors denial, the PTAB may institute an IPR ifthe petitioner presents a compelling patentability challenge or abroad, Sotera-type stipulation. The content of this article is intended to provide a generalguide to the subject matter. Specialist advice should be soughtabout your specific circumstances.