In its precedential order in
The Fintiv order and its aftermath
The PTAB has discretion under section 314(a) to deny institution of post-grant proceedings. In a
Discretionary denials rose by 60% yearover-year in 2020. Overall, 20% of denials were on procedural grounds, compared to 12.5% in 2019. Of the 228 non-merit denials, 62% were related to the NHK-Fintiv rule.
Block use of the NHK-Fintiv rule
The rise in discretionary denials triggered much commentary about the NHK-Fintiv rule and sparked the Fintiv lawsuit.
On
The USPTO's recent actions
Subsequent USPTO actions appear to respond to the plaintiffs' arguments in the Fintiv lawsuit and related criticisms. For example, one month after the filing of the Fintiv lawsuit, the USPTO created a new online form that allows stakeholders to nominate a particular PTAB decision for precedential designation. Less than four weeks later, the USPTO solicited comments on its discretionary denials, including the NHK-Fintiv rule.The commentary period was shorter than usual, lasting only one month and ending shortly before the USPTO moved to dismiss the Fintiv lawsuit.
On
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The Administrative Procedure Act (APA) provides no cause of action.
- The APA bars courts from reviewing decisions committed to the USPTO's discretion; and
- The only type of actions subject to review under the APA are substantive rules, which the NHK-Fintiv rule is not.
The USPTO also argued that the NHK Fintiv rule reasonably balances policy interests and could not have been adopted through notice-and-comment rulemaking, as it is not a substantive rule. Although alleging that "there is no requirement for the director to... issue[] a request for comments seeking the public's view on, among other things, the appropriate factors to consider for discretionary denials of inter partes review," the USPTO nevertheless noted that it had already done so.
The PTAB then designated two NHK-Fintiv related decisions (Snap and Sotera) precedential in
Summary
The USPTO's recent actions have little practical impact and appear to be attempts to calm the public uproar and mitigate complaints over the NHK-Fintiv rule. PTAB watchers wonder whether the installation of a new USPTO director leads to a recalibration of the agency's discretionary denial powers.
Footnote
1. The PTAB has invoked the so-called NHK-Fintiv rule that originates from two precedential PTAB decisions,
Originally Published by
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