PTAB Petitions Dipped in Q4 and 2021 as Prior Reforms Drew Further Congressional Focus
March 30, 2022
In the fourth quarter of 2021, 339 petitions for America Invents Act (AIA) review were filed with the Patent Trial and Appeal Board (PTAB), including 323 petitions for inter partes review (IPR) and 16 petitions for post-grant review (PGR). Filings in Q4 were around 3% lower than Q3 2021 (when 349 petitions were filed) and about 5% less than the fourth quarter last year (which saw 356 petitions).
Overall, around 1,400 AIA review petitions were filed last year—about 9.9% fewer than in 2020.
That downturn comes as the PTAB remains the focus of an ongoing debate over the reforms instituted by former USPTO Director Andrei Iancu. Perhaps none has been quite as controversial as the Board’s practice of using its discretion to tie institution in AIA reviews to the status of parallel district court litigation, based on a set of factors known as the NHK-Fintiv rule. While some of those factors have drawn support from stakeholders seeking to tilt the PTAB in a more plaintiff-friendly direction, one in particular—allowing the denial of institution when the Board’s final validity decision deadline is too close to a scheduled district court trial date—has drawn the ire of those who have otherwise promoted Iancu’s reforms.
Those critics include members of Congress, with Senator Thom Tillis (R-NC) among the most notable. Senator Tillis, who has often expressed support for most of the changes implemented by the former director, has been outspoken in his opposition to the practice of tying institution to scheduled trial dates. In particular, during the confirmation process for USPTO director nominee Kathi Vidal, Senator Tillis was critical of “the PTAB’s historical practice of crediting unrealistic trial schedules”—a reference to the fact that scheduled district court trial dates are often pushed back. Beyond the notion that this practice departs from the “policy underpinnings of the Fintiv rule”, Senator Tillis explained, he argued that this factor “has also created harmful incentives for forum shopping and inappropriate judicial behavior”.
See RPX’s review of the fourth quarter and 2021 for more on the NHK-Fintiv rule, the PTAB, and other trends impacting patent litigation and the patent marketplace.