NHK-Fintiv Denials Are Infrequent for West Texas Parallel Litigation, According to USPTO Analysis

As part of an ongoing Patent Trial and Appeal Board (PTAB) reform push from USPTO Director Kathi Vidal, the USPTO recently released a study on discretionary denials in America Invents Act (AIA) reviews based on the status of parallel litigation—a practice governed by a set of factors known together as the the NHK-Fintiv rule. Among other analyses, the study included a breakdown of NHK-Fintiv decisions by the venue of parallel district court cases, focusing on the three districts accounting for the bulk of such decisions: the Western and Eastern Districts of Texas and the District of Delaware.

That breakdown revealed one rather surprising conclusion. While the Western District of Texas has been a focal point in the NHK-Fintiv debate due to District Judge Alan D. Albright’s focus on scheduling early trial dates—and, indeed, his district was the one most discussed in NHK-Fintiv decisions—it had not seen an NHK-Fintiv denial based on parallel litigation since August 2021. West Texas was also the district with the lowest rate of NHK-Fintiv denials among the top three, at 16.1% (or 29 denials out of the 180 total institution decisions counted). The Eastern District of Texas had a much higher denial rate at 55.7% (or 83 of 149 total decisions), with Delaware the lowest at 11.2% (13 of 116 decisions total).

However, the Western District of Texas may soon draw less attention by district court plaintiffs—and, by extension, in related PTAB trials—as a result of a major change by Chief Judge Orlando Garcia. Filing rules previously allowed plaintiffs to pick their division, guaranteeing that they would get the famously plaintiff-friendly Judge Albright when filing in Waco (where he is the only district judge). After criticism from Congress and Supreme Court Justice John G. Roberts, Jr., Chief Judge Garcia issued a new standing order mandating that Waco patent suits be randomly distributed among 12 district court judges throughout the district. As discussed in a recent RPX analysis, this new change could lead NPEs to rethink their preference for West Texas.

For more on the PTAB, venue, and other trends impacting patent litigation and the patent marketplace, see RPX’s second-quarter review.