Time Pressure at the PTAB: The Impact of the NHK-Fintiv Rule
February 8, 2023
2022 was a year of change for the Patent Trial and Appeal Board (PTAB) in the wake of USPTO Director Kathi Vidal’s April confirmation, with some of her most notable reforms impacting the PTAB’s practice of discretionary denials in America Invents Act (AIA) reviews based on the status of parallel litigation.
Under that practice, known as the NHK-Fintiv rule, the Board can tie institution to a variety of factors based on certain aspects of a district court case asserting the same patent. The rule has long been a point of contention for frequent defendants, especially the NHK-Fintiv factor allowing the PTAB to deny institution when its final written decision deadline would fall too close to the district court’s scheduled trial date. Given the popularity of venues, like West Texas, that schedule trials as early as possible, this forces petitioners to file earlier than they might otherwise—essentially, further compressing the one-year window within which defendants may file an inter partes review (IPR).
One key result of this time pressure is that district court defendants have been filing IPR petitions closer to the date on which they are sued in the two years after the Fintiv decision was designated as precedential (the earlier NHK Spring decision having received that designation one year prior), as compared to the two years before. A breakdown of this shift is shown below. Note, in addition to the increase in five of the six earliest two-month periods (counting months from the district court filing date), that the share of petitions filed within the first six months rose from 20% to 29%, and for those filed in the first four months, from 6% to 11%. Additionally, although 44% of pre-Fintiv petitions were brought just before the time bar expired, at 11-12 months from the district court filing date, that fell to 26% post-Fintiv.
However, as detailed in RPX’s fourth-quarter review, discretionary denials are now on the decline, while institution rates have increased in the wake of a recent guidance limiting the application of NHK-Fintiv. See the full report for details.
