Big Tech companies like Apple and Google are facing challenges when it comes to the NHK-Fintiv framework for discretionary denials of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). These companies argue that the NHK-Fintiv rule, which was developed through PTAB precedential decision-making, should have undergone notice-and-comment rulemaking because it affects private interests and binds administrative patent judges (APJs) at the PTAB.
The recent appellate brief filed at the U.S. Court of Appeals for the Federal Circuit (CAFC) highlights the concerns of Big Tech companies regarding the NHK-Fintiv framework. The rule, which established six factors for PTAB APJs to consider when potentially denying IPR petitions based on parallel litigation in district court, has led to an increase in denials of IPR petitions that would have otherwise been instituted. This has raised questions about the rule’s impact on private interests, particularly those of infringement defendants.
Apple and Google are pushing back against the notion that the NHK-Fintiv rule is a general statement of policy exempt from notice-and-comment rulemaking requirements. They argue that the rule’s binding nature restricts the PTAB’s discretion and prevents the Board from instituting IPRs on petitions when the NHK-Fintiv factors point away from institution. This lack of meaningful latitude for APJs to deviate from the discretionary denial factors is a key concern for the tech companies.
Moreover, the tech companies believe that the NHK-Fintiv framework’s flaws underscore the importance of following proper notice-and-comment procedures. They point to provisions of the America Invents Act (AIA) that emphasize the need for regulations impacting IPR proceedings to undergo Section 553’s notice-and-comment procedures before adoption. Failure to adhere to these procedures can result in unintended consequences, such as impacting the one-year time limit for filing an IPR petition following infringement allegations filed in district court.
Overall, the ongoing legal battle between Big Tech firms and the USPTO over the NHK-Fintiv framework highlights the complexities of patent law and the challenges that arise when implementing new rules and procedures. As the tech industry continues to evolve and innovate, it is crucial to ensure that patent policies and regulations provide a fair and transparent process for all parties involved.