Discretionary Denial of Inter Partes Review and the Patent Trial and Appeal Board

The inter partes review (IPR) is an administrative procedure conducted by the Patent Trial and Appeal Board (PTAB), an adjudicative body within the U.S. Patent and Trademark Office (USPTO). IPR provides an opportunity for third parties to challenge a patent’s validity after it has already been granted. A petitioner can file a petition with the PTAB to “institute” IPR. If the review is instituted, the PTAB considers the evidence presented and issues a final written decision, either holding the patent valid or striking it down as invalid. Although IPR was introduced as an alternative to litigation, it is often used alongside litigation. In response to this dual track, the PTAB has introduced a practice of exercising discretion in determining whether to institute or deny institution of an IPR. The PTAB’s discretionary-denial practice uses the NHK-Fintiv factors, established in two precedential PTAB decisions, that allow the PTAB to consider the progress of a parallel court proceeding in its decision whether to institute. The PTAB’s use of these factors has created controversy and uncertainty for stakeholders, who have found it difficult to predict whether the PTAB will exercise its discretion, and whether their valuable patents may be deemed invalid as a result. This Note argues that the PTAB has exceeded its statutory authority in its practice of discretionary denial, and that the U.S. Supreme Court should bar this practice. Furthermore, this Note argues for legislative reform that would not only allow the PTAB to consider evidence of the resources already expended in a parallel litigation, but would also prohibit the consideration of circumstances such as scheduled trial dates, which are often subject to change. The proposed action would restore stability and confidence in the PTAB’s IPR procedure