PTAB Institution Rate Rose After Vidal’s First Batch of NHK-Fintiv Reforms
February 15, 2023
RPX’s report on the fourth quarter and 2022 takes a close look at the significant changes that USPTO Director Kathi Vidal made last year to the Patent Trial and Appeal Board (PTAB) in the wake of her April confirmation. Some of her most impactful reforms so far have dealt with the Board’s practice of discretionarily denying institution in America Invents Act (AIA) reviews based on the status of parallel district court litigation under the NHK-Fintiv rule.
In June, Vidal issued a guidance that refines the PTAB’s approach to such denials based on stakeholder criticisms—especially those related to an NHK-Fintiv factor allowing institution to be denied when the Board’s final decision falls too close to a scheduled date in a parallel district court case. The guidance establishes that the Board may consider data on actual time to trial, possibly blunting objections that the scheduled dates are too speculative of a metric. Additionally, the guidance endorses a series of existing practices that allow parties to stipulate around certain NHK-Fintiv factors by agreeing to be estopped by their petitions.
A USPTO study issued alongside that June guidance indicates that discretionary denials were already on their way down in 2021. After peaking in the first quarter of that year, there were just six such denials issued in Q4 2021, compared to 85 decisions granting institution after analyzing NHK-Fintiv.
Meanwhile, data also indicate that the overall institution rate has since been on the rise—increasing from 59% in 2021 to 67% in 2022. Breaking down the past year even further suggests that the June guidance is having an effect, as the institution rate was 68% in the second half of the year (compared to 58% in the second half of 2021 and 66% for the first half of 2022).
In a late-December interview, Vidal suggested that further changes are coming, confirming that the USPTO was working on an advance notice of proposed rulemaking to let stakeholders weigh in on her office’s next batch of discretionary denial reforms—and expressing the hope that this proposal would be released in Q1 2023.
For more on the PTAB, as well as further analysis of other key trends that impacted patent litigation and the patent marketplace in Q4 and 2022, see RPX’s fourth-quarter review.