NHK-Fintiv: reaching the tipping point?

The Patent Trial and Appeal Board's discretionary denial in view of parallel litigation is at a crossroads, explain Brenton Babcock and Tyler Train of Womble Bond Dickinson

In 2012, Congress enacted the American Invents Act (AIA) for the stated goal of establishing a more efficient and streamlined patent system that would improve patent quality and limit unnecessary and counterproductive patent litigation costs.

Part of Congress’ efforts in achieving that goal was the creation of adversarial, litigation-like, administrative procedures at the US Patent and Trademark Office (USPTO) for challenging patents, such as inter partes review (IPR) and post-grant review (PGR).

Almost a decade later, the USPTO’s Patent Trial and Appeal Board (PTAB) has come under considerable scrutiny—particularly from frequent petitioners—for exercising its discretion to procedurally deny IPR and PGR petitions where the challenged patent is (as is typically the case) also asserted in parallel litigation.