NXP USA, Inc. v. Impinj, Inc.

De-designated: the USPTO de-designated this decision on April 25, 2025; it is no longer precedential. When a petitioner offers a stipulation related to Fintiv factor 4 (overlap between issues raised in the petition and in the parallel proceeding) for the first time after the Board has denied institution under 35 U.S.C. § 314(a), the stipulation is not a proper basis for granting rehearing. The only appropriate time to offer such a stipulation is prior to the Board's decision of whether to institute review. This decision is no longer designated precedential: it was de-designated on April 25, 2025 and is listed only in the archive of de-designated decisions, so it is not binding. When it issued, it clarified how stipulations bear on Fintiv factor 4 by fixing the timing, and it followed Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 (precedential) on stipulations and the June 21, 2022 Guidance Memo. For a petitioner, a Fintiv-related stipulation had to be filed before the institution decision, and a petitioner could not wait to see whether institution was denied and then offer it on rehearing. For a patent owner, the decision protected a denial of institution from being undone by a late stipulation and from the gamesmanship the Director described. The decision cites 37 C.F.R. § 42.71(c), (d) for the rehearing standard and cites no Federal Circuit or Supreme Court authority. LEGAL TEST OR STANDARD: The Director did not state a multi-factor test. The Board's rehearing inquiry was whether it had misapprehended or overlooked any matters in the decision denying institution (37 C.F.R. § 42.71(c), (d)). The Director held that a stipulation offered for the first time after a denial of institution is not a proper basis for granting rehearing, and that the only appropriate time to offer a stipulation related to the Fintiv factor 4 analysis is prior to the Board's decision of whether to institute review. Fintiv factor 4 concerns overlap between issues raised in the petition and in the parallel proceeding. TRIGGERING FACTS: Institution was denied under 35 U.S.C. § 314(a) in view of Fintiv. Only after that denial, in its rehearing request, did the petitioner submit a stipulation that, if trial were instituted, it would not pursue any grounds based on the prior art references relied on in the IPR. The petitioner gave no explanation for the lateness, and the Board's precedent on stipulations, including Sotera, issued long before the petition was filed. The petitioner could have offered the stipulation before the institution decision but did not. KEY QUOTE: "I therefore hold that the only appropriate time for a petitioner to offer a stipulation related to the Fintiv factor 4 analysis is prior to the Board’s decision of whether to institute review." (Paper 13, p. 4) PRIOR PRECEDENT AFFECTED: Applies Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), factor 4. Follows the Board's reliance on Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 (Dec. 1, 2020) (precedential) on stipulations, and the Office's June 21, 2022 Guidance Memo. The petitioner cited Hulu, LLC, v. SITO Mobile R&D IP, LLC, IPR2021-00219, Paper 11 (May 10, 2021) as a prior panel decision giving such a stipulation weight under factor 4. The Director affirmed the Board's rehearing decision, Paper 12. PRACTICE TIP: If you want a Fintiv factor 4 stipulation considered, file it with the petition or before the Board decides institution, and do not hold it back as a fallback for a rehearing request after a denial.