NHK-Fintiv Denials Have Declined Dramatically, Says USPTO Study
July 20, 2022
USPTO Director Kathi Vidal recently kicked off a push to reform the Patent Trial and Appeal Board’s (PTAB’s) use of discretionary denials based on parallel litigation, limiting the application of the NHK-Fintiv rule in a new interim guidance. Alongside that guidance, the USPTO also released a study detailing NHK-Fintiv’s impact, with data revealing that although NHK-Fintiv has been a common defense, it has succeeded much less often in the past year.
That study revealed that after the Fintiv decision was designated as precedential in May 2020 (with its companion NHK Spring decision having been so designated one year prior), parallel litigation was raised in 40% of all America Invents Act (AIA) review proceedings (meaning that either the institution decision analyzed NHK-Fintiv, or the patent owner argued for discretionary denial under NHK-Fintiv prior to the denial of institution on other, merits-related grounds).
Additionally, the study found that NHK–Fintiv denials peaked in the first quarter of 2021, as shown below, and “dropped significantly afterwards”. Indeed, the data from the study indicate that the PTAB issued just six NHK-Fintiv denials in Q4 2021, compared to 85 decisions granting institution after analyzing NHK-Fintiv.
See RPX’s report on the second quarter for more on the NHK-Fintiv rule, the PTAB, and other trends impacting patent litigation and the patent marketplace.
