In IPR2019-00567 (Paper 23 at 29-30) and IPR2019-00568 (Paper 22 at 23-24), the PTAB, for potentially the first time, denied institution partially based on the Petitioner raising the same issues in its Petition that had been resolved against them in an ITC proceeding.

The PTAB provided the following factors it considered to deny institution:

Specifically, in view of the fact that the ITC proceeding involves (a) the same parties here, (b) a challenge to the validity of the same independent claim of the ’024 patent challenged here, (c) application of the same claim construction standard that would be applied in an inter partes review, (d) consideration of the same prior art set forth in the grounds presented in the Petition, i.e., Saxonov, Church, and Hinz, (e) consideration of the testimony from the same declarants relied upon here, i.e., Drs. Metzker and Dear, and, particularly, (f) the ALJ’s recent issuance of the ID analyzing and discussing the teachings of that prior art and testimony, in the context of addressing a validity challenge to the ’024 patent claims, we determine that, even if the Petition would have met the threshold standards for institution, instituting a trial would be an inefficient use of Board resources. Accordingly, we exercise our discretion to independently and additionally deny institution under § 314(a).

’567, Paper 23 at 29-30.

Thus, at least one panel has now made a clear decision to deny institution at least partially based on the findings at the ITC regarding patent validity – at least in cases where the arguments raised are substantially the same.