No Link – Most IPR claims have been filed in another venue – prefer direct USPTO data

Parallel litigation: overview • Parallel litigation: a scenario in which petitioner, patent owner, and the patent at issue are simultaneously engaged in a PTAB proceeding and litigation in another venue. • The vast majority of petitioners (about 80% or higher) have been sued by patent owners in another venue prior to filing their petitions.

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Parallel litigation: key cases NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., Case IPR2018- 00752, Paper 8 (Sept. 12, 2018) (designated precedential May 7, 2019) • Denying institution because (1) the prior art was previously considered and (2) co-pending district court proceeding was nearing completion • First decision on institution to explicitly cite a parallel litigation’s advanced state as a reason for denying the petition • Same invalidity challenges were involved in the PTAB and district court proceedings

Parallel litigation: key cases Apple Inc. v. Fintiv, Inc., Case IPR2020-00019, Paper 11 (March 20, 2020) (designated precedential May 5, 2020) • Provided a non-exclusive list of factors that the PTAB considers in exercising discretion on instituting inter partes review because of parallel district court litigation Note: Because of the prominence of NHK and Fintiv within the topic of discretionary denials based on parallel litigation, the topic is often synonymously referred to as “NHK/Fintiv” or “Fintiv,” even regarding cases decided in FY19 and the beginning of FY20, before the Fintiv decision issued

Parallel litigation: key cases Denial of institution based on NHK/Fintiv often can be avoided by stipulating that the petitioner will not pursue similar arguments in the parallel litigation. • Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, Case IPR2019-01393, Paper 24 (June 16, 2020) (designated informative July 13, 2020) (decision on rehearing of denial, instituting review when the Fintiv factors weighed against exercising discretion to deny institution because petitioner filed a stipulation to not assert the “same grounds” in district court). • Sotera Wireless, Inc. v. Masimo Corporation (§ II.A), IPR2020-01019, Paper 12 (Dec. 1, 2020) (designated precedential Dec. 17, 2020) (instituting review when petitioner filed a broad stipulation to not assert in district court grounds “raised or that could have been reasonably raised in an IPR”)

Parallel litigation: summary • After Fintiv was designated precedential, discretionary denial based on parallel litigation has been raised in about half of all cases in which petitioner was sued by patent owners in another venue • The number of cases denying institution dropped significantly after peaking during the first half of fiscal year 2021 • Stipulation filings increased after Sotera was designated precedential, and Decisions on Institution (DIs) noting stipulations frequently avoid denials based on NHK/Fintiv • The majority of cases involving an NHK/Fintiv issue involved copending litigation in one of the Western District of Texas, the Eastern District of Texas, and the District of Delaware

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Parallel litigation: methodology • All DIs and patent owner preliminary responses (POPRs) in each inter partes review (IPR), covered business method review (CBM), and post grant review (PGR) in the indicated time periods during Fiscal Years 2019 through 2022 (FY19–22) were reviewed to capture information regarding the NHK/Fintiv issue. • The appendix (a separate document posted with this presentation) includes definitions and further methodology details

NHK/Fintiv issue frequency: definitions 11 The next graphic (slide 12) represents the cases in which NHK/Fintiv was raised as (1) a number (blue bars) and (2) a percentage of all cases (blue line). • (1) The blue bars represent the number of cases through institution where NHK/Fintiv was raised because either: a. the DI analyzed NHK/Fintiv; or b. patent owner argued for denying institution based on NHK/Fintiv in its POPR and NHK/Fintiv was not addressed in the corresponding DI because, for example, the DI denied institution on the merits or the case terminated prior to PTAB issuing a DI. NHK/Fintivwas not considered raised if the Petition raised NHK/Fintivpreemptively, but the POPR did not raise NHK/Fintiv and the DI did not analyze NHK/Fintiv. • (2) The blue line represents the percentage of all cases through institution where NHK/Fintiv was raised, regardless of whether ultimately there was an institution.

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After Fintiv was designated precedential, parallel litigation was raised in about 40% of all cases, regardless of whether ultimately there was an institution