Fintiv Revisited—District Court Transfer Results in Institution Reversal, PTAB Litigation Blog

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In November 2020, Google LLC filed two petitions requesting an inter partes review of the claims of Ikorongo Technology LLC (“Ikorongo”) owned U.S. Patent No. 8,874,554 (“the ’554 patent”).  Separate petitions were filed to address claims with different priority dates and to comply with word limits.  The patent relates to identifying media items associated with a geographic area of interest to a user.  In the Petition, Google identified itself, Samsung Electronics Co. (and other Samsung subsidiaries) (“Samsung”), and LG Electronics, Inc. (“LGE”) as real parties in interest.  At the time of the Petition, the ’554 patent was also the subject of two parallel proceedings in the Western District of Texas involving Samsung and LGE.  On June 7, 2021, the PTAB entered a Decision Denying Institution, considering the factors set forth in Apple Inc. v. Fintiv (“Fintiv factors”) and relying in part on these parallel proceedings.  The PTAB found that three of the six Fintiv factors (factor 2—proximity of court’s trial date, factor 3—investment in the parallel proceeding, and factor 5—commonality of the parties in parallel proceedings) favored exercising discretion to deny institution of inter partes review. Factors 1 and 6—stay of related litigation proceeding and other circumstances, respectively—neither favored nor disfavored denial of institution.  The Board found that factor 4—overlap with issues raised in parallel proceeding—weighed “marginally in favor of not exercising discretion to deny institution.”  Considering the Fintiv factors as a whole, the Board denied institution of inter partes review.

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