On Oct. 28, 2021, the Solicitor General filed a brief in opposition to Apple’s petition for a writ of certiorari in Apple Inc. v. Optis Cellular Tech., LLC et al. (No. 21-118). The government argued that the Federal Circuit does not have jurisdiction over appeals of discretionary denials of inter partes review (IPR) pursuant to 35 U.S.C. § 314(d).

Apple argues that the Patent Trial and Appeal Board’s Fintiv factors improperly impede IPRs for patents asserted in co-pending district court litigation. The Board adopted the “Fintiv factors” to avoid duplication of effort and to avoid inconsistent results, and as an anti-harassment measure to protect patent owners from repeated challenges to the same patents.

The underlying dispute between Apple and Optis stems from an August 2020 jury verdict in the Eastern District of Texas finding that Apple infringed five Optis patents pertaining to 4G LTE technology. The jury found that Apple had not proved the invalidity of any asserted claims. During the litigation, in February 2020, Apple filed IPR petitions challenging three of the same patents. A month after the jury trial concluded, in September 2020, the Board issued discretionary denials as to each of the IPR petitions. The Board applied the Fintiv factors to deny institution of Apple’s IPR petitions due to “substantial overlap” with the district court litigation, which ended a month before the statutory deadline for a decision as to whether to institute IPR.

In its petition, Apple argued it should be able to appeal the denials of institution based on the Fintiv factors, and that, in the alternative, the Federal Circuit should grant mandamus to review the denials. The government argued that the Federal Circuit correctly dismissed Apple’s appeals since “[t]he determination by the Director whether to institute an inter partes review” is “final and nonappealable.” 35 U.S.C. § 314(d). The government also stated that the “USPTO reasonably declined to institute inter partes review after a jury verdict on the same patent claims, and petitioner cannot establish the ‘clear and indisputable right’ to a different outcome that the mandamus standard requires.”

The government readily dispensed with Apple’s position that the Fintiv factors are arbitrary and capricious, explaining that the factors are closely tied to the statutes relating to the Board’s decision as to whether to institute review, and that Apple’s challenge is therefore squarely barred by Section 314(d) which makes clear that such decisions are not appealable. It asserted that Congress had “sound reasons” for distinguishing between the right to appeal a final written decision and the denial of institution at issue here because the latter “does not alter the rights of any private party,” leaving the patent owner’s claims “undisturbed” while allowing the petitioner to nevertheless challenge their validity in an ex parte reexamination, in a declaratory judgment from a district court or by asserting an affirmative invalidity defense in litigation. 

In closing, the government noted that “even if the questions presented otherwise warranted this Court’s review, this case would be a poor vehicle for considering them.” It explained that the USPTO is currently soliciting public comments on the Fintiv factors, specifically: (1) whether the USPTO should promulgate a rule with a case-specific analysis such as that outlined in Fintiv (2) whether the USPTO should instead adopt a bright-line rule and (3) whether there are any other modifications the USPTO should make in its approach. 

A second petition for a writ of certiorari regarding the Fintiv factors is currently before the Supreme Court in a pharmaceutical case, Mylan Labs. Ltd. v. Janssen Pharmaceutica, N.V. (No. 21-202). There, the USPTO recently filed a brief opposing certiorari, closely tracking the positions set forth by the government here. 

As pointed out by the government brief, the Court has already stated in its prior IPR-related decisions that the America Invents Act has “no mandate to institute review” and that “Congress has committed the decision to institute inter partes review to the Director’s unreviewable discretion.” Further, the comments solicited by the USPTO show that the Board’s Fintiv factors enjoy broad support from stakeholders. Many therefore anticipate that the Apple and Mylan petitions will be denied for the reasons set forth in the government’s brief.

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