After Fintiv: The Continuing Evolution of Discretionary Denial at the PTAB

In 2019, the U.S. Patent Trial and Appeal Board (PTAB) designated precedential NHK Spring Co., Ltd. v. Intri-plex Technologies, Inc., a decision in which the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny institution of a timely filed petition for inter partes review (IPR) based on the advanced stage of a related district court litigation. Following NHK Spring, many patent owners began urging the PTAB to deny petitions in light of co-pending district court litigations, and many petitioners saw petitions denied on this ground. In Apple Inc. v. Fintiv, Inc., which was designated precedential in May 2020, the PTAB articulated six factors (Fintiv factors) for Administrative Patent Judges to weigh when considering whether to exercise discretion to deny institution. This article summarizes the Fintiv factors and explores subsequent developments pertaining to each. Read the full article here.