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Apple Factors Added to NHK Mix

A few weeks back I highlighted the fact that the Patent Trial & Appeal Board (PTAB) was in the process of considering a more nuanced approach to NHK determinations.  That is, with a few Board decisions seemingly denying IPR trial institutions on the sole basis of a competing, and earlier district court trial date, the Board was considering whether its approach had become too rigid.

Today, the Board designated as precedential the supplemental briefing order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020), which lists six factors to be assessed in such scenarios.
Continue Reading PTAB Adds Factors to Assess Import of Competing Trial Date

Additional Briefing Invited on Binary Application of NHK

Last week I pointed out that the litigation timing factor introduced by NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc., has effectively swallowed the entirety of the General Plastic factors in NHK scenarios. That is, in some recent Board decisions, institution has been declined in AIA Trial Proceedings on the sole basis that a district court litigation would reach trial first.  Given the AIA has its own timing mechanism, 35 U.S.C. § 315(b), and plaintiffs seeking to avoid the PTAB need only go to the WDTX (where NPEs tend to go anyway) to leverage this development, this is a troublesome development for the system.

In that same post, I pointed out that a request was made to the Precedential Opinion Panel (POP) to review the Board’s application of NHK (Sand Revolution II LLC., v. Continental Inter Modal Group – Trucking LLC. (IPR2019-01393). While that request was denied, the very next day, the panel in Sand Revolution ordered supplemental briefing on this important topic.
Continue Reading PTAB to Take a More Nuanced Approach to NHK Determinations?