AIA Review Institution Rates Went Down in 2020 as the PTAB Expanded Discretionary Denials

RPX data show that the institution rate for America Invents Act (AIA) review trials fell by about 2.2% year-over-year, dropping from 61% in 2019 to 58.9% in 2020.

That decrease is at least partly attributable to the PTAB’s increasing exercise of discretion to deny institution based on a growing variety of factors, perhaps most controversially through a series of decisions collectively known as the NHK-Fintiv rule. That rule allows the Board to deny institution based on the status of a parallel district court case involving the same patent. A lightning rod among the six NHK-Fintiv factors is the one allowing institution to be denied when a scheduled district court trial date is too close to the due date for the PTAB’s final written decision. When litigating in venues that are more aggressive about scheduling early trial dates, such as the Western District of Texas, this factor shrinks the window in which an AIA review petition can be effectively filed to one smaller than what is practically allowed by statute.

The NHK-Fintiv rule has attracted a great deal of interest among stakeholders on both sides of the issue. A lawsuit filed by a coalition of tech companies last August has received support from other businesses in a growing range of industries, while a trade association supporting the PTAB’s approach has sought to intervene. Meanwhile, the USPTO has proposed to codify the NHK-Fintiv­ rule and other precedents on discretionary denials, prompting over 800 comments from interested parties.

See RPX’s fourth-quarter review for more on this and other trends impacting patent litigation and the patent marketplace.