The NHK-Fintiv Saga Continues: USPTO and Amicus Defend Discretionary Denials
Patent – Patently-O 2024-11-20
Summary:
by Dennis Crouch
The Federal Circuit is poised to address a significant administrative law question in Apple v. Vidal regarding whether the USPTO's NHK-Fintiv framework for discretionary IPR denials required notice-and-comment rulemaking under the APA. The case comes after the Federal Circuit's 2023 decision finding the procedural challenge reviewable while affirming dismissal of substantive challenges to the framework. Apple Inc. v. Vidal, 63 F.4th 1 (Fed. Cir. 2023). The case takes on added significance given Director Vidal's recent resignation announcement. Her likely Trump appointee replacement may return to former Director Iancu's more aggressive approach to discretionary denials.
Under the AIA, the USPTO director has discretion to deny IPR petitions, even in cases where the case otherwise meets the statutory requirements for an inter partes review. The Director has delegated authority to the PTAB to decide these issues, including discretionary denials. The NHK-Fintiv framework emerged through two precedential PTAB decisions that guide discretionary denials of IPR petitions when parallel district court litigation is pending. In NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018), the Board first articulated that the advanced state of parallel district court proceedings could justify denying institution.