Fintiv & Thryv Highlight PTAB-District Court Patent Litigation Interplay: Parties Must Heed the Discretionary Denial Trilogy

The establishment of the Patent Trial and Appeal Board (PTAB) forever changed district court patent litigation. Recently, the PTAB’s increased use of its discretionary denial authority and the Supreme Court’s confirmation of the unreviewability of institution decisions highlights the criticality of parties considering the evolving interplay of PTAB invalidity trials and district court litigations. We explore this issue by examining the March 20, 2020 Order (Paper 11) in Apple Inc. v. Fintiv, Inc., which the PTAB designated as precedential on May 5, 2020. Fintiv enumerates a non-exclusive list of factors that the PTAB will evaluate when considering whether to exercise its discretion to deny instituting a petition because of events in parallel proceedings in other tribunals, such as parallel district court litigation involving the challenged patent.