Discretionary Denials of IPR Petitions by the PTAB: Recent Developments, Trends, and Effective Strategies

Director David H. Holman, Ph.D. will speak on the panel “Discretionary Denials of IPR Petitions by the PTAB: Recent Developments, Trends, and Effective Strategies” at the 2021 IPO Annual Meeting in Austin, TX. His panel will occur on Monday, September 20, 2021 at 9:30 a.m. CT.

This panel will also be hosted during the 2021 IPO Annual Meeting’s virtual program on Wednesday, September 29, 2021 at 11:00 a.m. ET.

Panel Overview

This session will explore what have proven thus far to be effective strategies by patent owners and petitioners, including the choice of forum for the district court action by patent owners, and successful strategies that have been used by petitioners to avoid discretionary denials. Many stakeholders have criticized discretionary denials under the NHK/Fintiv criteria as too dependent on the district court in which the parallel case was filed. A substantial majority of IPR petitions in which the PTAB has denied institution based on those criteria have been related to cases pending in the Eastern District or Western District of Texas, where judges have set aggressive case management schedules with early trial dates. In comparison, very few PTAB discretionary denials relate to cases filed in the District of Delaware or the District of New Jersey. This panel will explore the substantive arguments made by the parties in the Apple v. Iancu case, as well as any decision and/or the issues on appeal of any such decision. The panel will also debate whether the NHK/Fintiv criteria are fair and equitable and whether they meet the goals of the AIA to have efficient and predictable determinations of whether patents are invalid. The panel will also discuss alternative criteria that might be considered by the USPTO.