NHK-Fintiv Has Led to an Upswing in Reexam Requests
May 4, 2022
In Q1 2022, the Patent Trial and Appeal Board (PTAB) faced continued stakeholder pressure over the NHK-Fintiv rule, which allows the Board to use its discretion to deny institution in AIA reviews based on several factors related to the status of parallel district court litigation. The most hotly debated of those factors has been the one that allows the PTAB to deny institution when its final decision would be due close to the district court’s scheduled trial date. This practice has been especially problematic from a strategic perspective because it forces petitioners to file as early as possible—effectively, further compressing the one-year window defendants already have to file an IPR—based on an aspect of litigation, trial scheduling, that is inherently outside of a petitioner’s control and is subject to change.
Data show that a key result of NHK-Fintiv has been that would-be petitioners are instead filing more ex parte reexaminations, which are not subject to the same level of discretionary denials and offer a variety of other advantages (such as lower cost and lack of estoppel).
Indeed, reexam requests went up markedly last year: parties filed 331 such requests, or 53.2% more than in 2020 (which saw 216 requests filed). Early data for 2022 suggest that this trend is holding, with about the same number of reexam requests filed in Q1 (69) as in the first quarter last year (72). Moreover, the share of those patents that have been previously litigated in district court increased in 2021 as well, accounting for 64% of the patents with reexam requests (up from 60% in 2020 and 52% in 2019), although that dipped slightly to 61% in Q1 2022. In addition, the share of patents with reexam requests that were also previously challenged via AIA review also continued to increase last year, reaching 36% in 2021—up from 33% in 2020 and 25% in 2019. That AIA review overlap was even higher in Q1 2022 at 43%.
Taken together, these datapoints suggest that NHK-Fintiv is the reason that defendants are filing more ex parte reexams.
See RPX’s first-quarter review for more on this and other trends impacting patent litigation and the patent marketplace.
