As the last quarter of 2022 is winding down, procedural denials have decreased by over 61%, year-over-year. The total number of PTAB decisions, by contrast, has increased just 7.5%. For the year, the overall institution rate is now over 68%, compared to 58.8% (a low) in 2021.
Put simply, there was but one use of 314(a) to deny a petition in the third quarter of 2022 in light of an intervening cancellation under 101 in the district court—a use that the Director subsequently sua sponte moved to review; and just three discretionary denials total, the others under 325(d). (She moved to review on one of those two as well.) On the year to date, we count only 13 NHK Spring/Fintiv denials, most of those coming in Q1.
The market change in Fintiv denials (or section 314 in general) is plainly Director-dependent, and, it is worth noting, is likely related to Director Vidal’s clarification memo and subsequent precedential Board decisions from June. See Kathy Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, June 21, 2022. In that memo, Director Vidal clarified that: 1) Fintiv denials were inappropriate over ITC proceedings; 2) Fintiv should not be used when there are compelling merits to the patentability challenge; 3) Sotera stipulations also demand the Board look past Fintiv; and 4) for the controversial “factor 2” trial dates, the Board would now rely on median time-to-trial, rather than scheduled trial dates, when assessing the potential for conflict.
Looking at year-to-date, the Board has issued just 70 discretionary denials—down substantially from the Director Iancu-era years—with most of those 70 coming prior to Director Vidal assuming the post.
