A slow year for PTAB precedential decisions

The board designated no precedential opinions last year—will 2022 play out any different, asks Rick Bisenius of Fish & Richardson.

After a relatively busy 2020 in which the Patent Trial and Appeal Board (PTAB) designated over a dozen opinions as either precedential (11) or informative (4), the PTAB did not designate a single opinion as precedential or informative during the 2021 calendar year.

Many of the precedential and informative decisions from 2020 touched on the then-new concept that the status and anticipated trial date of a related district court or International Trade Commission (ITC) proceeding should weigh into the board’s decision to discretionarily deny an inter partes review (IPR) or post-grant review (PGR) petition under § 314(a).

Although the concept that the status of a related district court proceeding should weigh in favour of denying institution under the board’s discretion was first raised in 2018 in NHK Spring v Intri-Plex Techs, (IPR2018-00752), the six-factor test for application of discretionary denial based on a related proceeding was formalised in Apple v Fintiv (IPR2020-00019), which saw the paper authorising supplemental briefing to address the factors related to a co-pending parallel proceeding designated precedential in May 2020, followed by the Final Written Decision designated informative in July 2020.