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`2021 Discretionary Denials Have Passed 100, But Are Slowing - Law360
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`https://www.law360.com/ip/articles/1403479/2021-discretionary-denials-have-passed-100-but-are-slowing?nl_pk=deaf734d-e64b-42ff-8e62-1741b2d8… 1/7
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`7/21/2021
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`2021 Discretionary Denials Have Passed 100, But Are
`Slowing
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`2021 Discretionary Denials Have Passed 100, But Are Slowing - Law360
`
`By Dani Kass
`
`Share us on: By Dani Kass
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`Law360 (July 15, 2021, 7:47 PM EDT) -- The Patent Trial and Appeal Board turned away 104 petitions for discretionary reasons in the first half of
`2021, but more than 70% of those were in the first quarter of the year, according to new Unified Patents data.
`
`Between January and March 2021, the PTAB rejected 74 petitions on procedural grounds, compared to 30 in the following three months, Unified
`Patents said July 6. Despite the dip, the group — which supports the PTAB invalidating weak patents — projected that number will double over the
`rest of the year, ending around 208 denials.
`
`"As projected, discretionary denials are on pace to be just slightly lower in 2021 than in 2020 overall," the organization said.
`
`https://www.law360.com/ip/articles/1403479/2021-discretionary-denials-have-passed-100-but-are-slowing?nl_pk=deaf734d-e64b-42ff-8e62-1741b2d8… 2/7
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`2021 Discretionary Denials Have Passed 100, But Are Slowing - Law360
`7/21/2021
`7785
`PTAB Institution Decisions Over Time
`Source: Unified Patents. 2021 is projected based on Q1 and Q2.
`2016
`Not Instituted - Procedural
`The PTAB is increasingly denying petitions for reasons other than merits.
`N t I
`tit
`t d M it
`2017
`2018
`2019
`2020
`2021*
`
`Go to Tableau Public
`Undo
`Last year, the PTAB denied 292 petitions based on the merits and 228 for procedural reasons, while granting 681 petitions, according to Unified
`Patents. The amount of petitions denied for reasons such as the timing of parallel district court litigation or similarity to other petitions had more
`than tripled between 2016 and 2020.
`
`A big factor in that was the PTAB's precedential Fintiv ruling, which set out criteria for when the timing of parallel litigation could justify turning
`away an otherwise meritorious petition. Fintiv was made precedential in May 2020, and it expanded on a previous decision called NHK Spring.
`
`While about a quarter of all new patent litigation is being filed in the Western District of Texas, about 40% of discretionary denials based on the
`timing of ongoing litigation involved the Eastern District of Texas, the report says. The Western District had about 23.2% of denials, followed by
`Delaware, Massachusetts and the Northern District of California.
`
`"The Western District of Texas was projected to see a slight bump in denying petitions using the NHK Spring/Fintiv framework when the patent in
`question is being disputed in that jurisdiction," the report says. "Now it would seem like there is a slight decrease in the WDTX, whether from lack
`of filing attempts, or from the speed of settlement there."
`
`It adds that in the seven patent trials Judge Alan Albright in the Western District has overseen, the time to trial has been about 24 months. The
`judge's desire to get patent cases to trial quickly had been commonly interwoven with the Fintiv narrative, as patent owners could harness his
`attempt at getting a fast turnaround to avoid having their patent reviewed by the PTAB.
`
`"That said, the speed of resolution in patent cases across all districts has risen substantially, even as COVID restrictions have begun to lift; the
`significant backlog is, rather than dissipating, apparently increasing time to resolution across the country," the report says.
`
`Overall, Unified Patents said it expects Fintiv denials to account for 80% of procedural denials in 2021. The precedent is in the process of being
`challenged in California federal court by Apple, Google, Cisco, Intel and Edwards Lifesciences, though, and the next USPTO director could also
`alter how it's being implemented.
`
`--Editing by Stephen Berg. Graphic by Jonathan Hayter.
`
`For a reprint of this article, please contact reprints@law360.com.
`
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`2021 Discretionary Denials Have Passed 100, But Are Slowing - Law360
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