Sand Revolution II LLC v. Continental Intermodal Group – Trucking LLC
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Delicate Balance: Details of Parallel Proceeding Tip Scales for Discretionary Denial

The Patent Trial and Appeal Board (Board) designated two decisions informative as they relate to weighing factors for determining how a parallel district court proceeding may impact the Board’s determination of whether to discretionarily deny institution under § 314(a). In Apple Inc. v. Fintiv, Inc., Case No. IPR2020-00019, Paper 15 (USPTO May 13, 2020) (Horner, APJ) (designated informative on July 13, 2020), the Board had previously requested supplemental briefing in a pre-institution order in this case (itself now designated by the Board as precedential) regarding six factors for weighing the impact of the parallel district court proceeding on whether to discretionarily deny institution. As to factor (1), whether the district court action is stayed or evidence exists that a stay may be issued, the Board weighed this factor as neutral because neither party had requested a stay and the district court had given no indication as to whether it would entertain a...

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Exercise of Institution Discretion During Parallel AIA and District Court Challenges

The Patent and Trial Appeal Board (PTAB) Precedential Opinion Panel (POP) refused to revisit an earlier PTAB panel decision, reiterating that it remains within the discretion of a PTAB panel to deny institution on a patent challenge because of a pending trial in federal district court. Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, Case No. IPR2019-01393, Paper 18 (PTAB Apr. 6, 2020) (Iancu, Dir.; Hirshfeld, Comm’r; Boalick, CAPJ, sitting as POP); Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, Case No. IPR2019-01393, Paper 19 (PTAB Apr. 7, 2020). After Sand Revolution petitioned for inter partes review (IPR) of Continental Intermodal Group’s (CIG’s) patent, CIG filed a preliminary response raising the issue of potential interference between any IPR proceeding and a pending district court proceeding. In a divided decision, a PTAB panel reasoned that the precedential PTAB decision NHK Spring (which permits...

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