2020 Pat. App. LEXIS 13179

2020 Pat. App. LEXIS 13179

Opinion

FINK, Vice Chief Administrative Patent Judge.

  ORDER

  Conduct of the Proceeding

  Supplemental Briefing on Discretionary Denial  

  35 U.S.C. § 314(a) and 37 C.F.R. § 42.5(a)  

  I. INTRODUCTION

  Petitioner, Apple, Inc., filed a Petition in this case on October 28, 2019, challenging certain claims of U.S. Patent No. 8,843,125 B2 (Ex. 1001, "the '125 patent ") owned by Patent Owner, Fintiv, Inc. Paper 1 ("Pet."). Patent Owner filed a Preliminary Response on February 15, 2020. Paper 10 ("Prelim. Resp."). In its Preliminary Response, Patent Owner requests that the Board apply its discretion under 35 U.S.C. § 314(a) to deny institution of the requested proceeding due to the advanced state of a parallel district court litigation in which the same issues have been presented and trial has been set for November 16, 2020. Prelim. Resp. [*2]  22-26 (citing NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential, designated May 7, 2019)). Although Petitioner addressed the issue briefly in the Petition, at that time no trial date had been set. See Pet. 7. In light of the apparent change in status of the parallel proceeding, the panel has determined that supplemental briefing on the issue of discretionary denial is necessary in this case to give Petitioner an opportunity to respond. This Order discusses the factors relevant to the Board's decision on whether to apply its discretion under 35 U.S.C. § 314(a) to deny institution. This Order authorizes the parties to file supplemental briefing addressing facts in this case relevant to these factors.

  II. DISCRETIONARY DENIAL UNDER NHK  

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