Fintiv Factor 3 Centers on Degree of Investment, Not Substantive Arguments

By Emily Tait and Adriane Elinski* –

In a recent decision, the PTAB granted institution of an IPR despite multiple parallel district court proceedings involving the same patent, and flatly rejected the Patent Owner’s argument that the Petitioner’s “conflicting” arguments on claim construction in the district court proceedings and in the IPR petition bore on Fintiv factor 3. CrowdStrike, Inc., v Webroot Inc., IPR2023-00126, Paper 9, at 10 (May 5, 2023).

CrowdStrike challenged the validity of multiple claims of Webroot’s ’224 patent, which is directed to a method and system for providing forensic visibility into client systems. The Board found that the Fintiv factors weighed against exercising its discretion to deny institution. The Board also reviewed CrowdStrike’s obviousness challenge to the ’224 patent claims in light of two prior art references and found that CrowdStrike had shown a reasonable likelihood of proving that at least one of the challenged claims is unpatentable. The Board thus granted institution on all challenged claims.

The Board examined the Fintiv factors and found that they were either neutral or weighed against exercising its discretion to deny institution. With respect to factor 3 (“investment in the parallel proceeding by the court and the parties”), Webroot argued that this factor favored denial of institution because CrowdStrike had taken conflicting claim construction positions in its district court briefing and in its petition for review.  According to Webroot, CrowdStrike sought a narrow interpretation in district court (arguing that certain method steps had to take place in a specific order) but took a broader position in the IPR (arguing that the method steps can take place in any order).

The Board was “unpersuaded” by this argument, explaining that Fintiv factor 3 “concerns the degree of investment, not the substance of the arguments being made.” CrowdStrike, Inc., v Webroot Inc., IPR2023-00126, Paper 9, at 10 (May 5, 2023).  Indeed, what is relevant to factor 3 is “if, at the time of the institution decision, the district court has issued substantive orders related to the patent at issue in the petition,” and, if so, “this fact favors denial” of the Petition.  Id. at 10 (citing Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 at 9-10 (March 20, 2020).  In this case, the scheduling order reflected that a Markman hearing had recently taken place and fact discovery had recently opened, but otherwise “[t]he parties have otherwise not invested a great deal in the related litigation.”  Id.

Further, the Board found that “it is not unusual for a patent litigation defendant to pursue an IPR based on a broader construction (such as the one offered by the Patent Owner) while also taking a narrower position in the district court.” Id. at 10–11.  The Board explained that there is “nothing inherently wrong with that” approach and, in any event, “we certainly will consider any claim construction issued by the district court[.]”

Finally, the Board found that, regardless of its relevance to Fintiv factor 3, CrowdStrike’s analysis of prior art in the IPR was not ultimately inconsistent with its proposed claim construction in district court.  Id.

This case stands as a reminder that arguments made under Fintiv factor 3 must center on the “degree of investment” made by the parties and the court in the parallel district court proceedings.  Allegedly “conflicting” substantive arguments on claim construction are “not unusual” and will be discounted by the Board as relevant to the analysis.

* Adriane was a summer associate in Jones Day’s Detroit Office.