Reexam Filings Continue to Dip Following Director Vidal’s NHK-Fintiv Guidance

In the first quarter, the Patent Trial and Appeal Board’s (PTAB’s) practice of discretionarily denying institution in America Invents Act (AIA) reviews based on the status of parallel district court litigation—known as the NHK-Fintiv rule—remained a focus of USPTO Director Kathi Vidal. Throughout Q1, Vidal used her post-Arthrex director review power to further clarify certain aspects of the rule, building on a June 2022 guidance that codified several existing practices that limited NHK-Fintiv’s application. USPTO data (as summarized here) show that discretionary denials based on NHK-Fintiv went down due to the practices codified in that guidance.

Another particularly notable result of the NHK-Fintiv rule was a shift by frequent defendants from AIA reviews to ex parte reexaminations, which are not subject to discretionary denials to the same extent. The number of reexam requests went up by 21% in 2020 and then by 53% in 2021, with an increasing share of those patents having previously been litigated in district court and subjected to PTAB challenges—together, indicating that this prior uptick was the result of uncertainty caused by NHK-Fintiv.

However, after one last spike in the second quarter of 2022, reexam filings dipped in Q3 (the first full quarter after Vidal’s late-Q2 guidance), plateaued in Q4, and then declined even further in Q1 2023—suggesting that the changes made to NHK-Fintiv have collectively reduced its deterrent effect on petitioners. That said, a significant share of those reexams still involve previously litigated patents and those challenged at the PTAB, indicating that reexams remain in play for district court defendants despite their reduced popularity in the wake of recent reforms.

See RPX’s first-quarter review for more on the NHK-Fintiv rule, the PTAB, and other trends impacting patent litigation and the patent market.