The Patent Trial and Appeal Board’s decision in Apple v. Fintiv, Inc. solidifies the Board’s trend of using its broad discretion towards denying Inter Partes Review (IPR.) The IPR acceptance rate has fallen from 87% percent in 2013 to 55% in 2020, only allowing an IPR to be instituted when there is a “reasonable likelihood that the petitioner would prevail.” In Apple, the Board introduced a six-part test intended to discourage IPR based on the advanced status of the underlying district court case. This new test that is intended to set precedent creates hurdles that may further reduce how often IPR is instituted.

The Apple v. Fintiv, Inc. Six Part Test for IPR

The Board used the following six-part test in Apple v. Fintiv, Inc. to determine whether to institute the IPR process allowable under 35 USC § 314(a).

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.

The Board emphasized the importance of employing the test while keeping in mind the big picture concerns for fairness, judicial efficiency, and patent quality. The court’s application of the factors weighed heavily towards denial of IPR, but the court did not make this determination. Instead, the panel requested that the parties submit a supplemental briefing in line with the six discretionary factors. Patent owners now have another arsenal in challenging IPR petitions, while Petitioners have some clarity on the new threshold for institution.