`
`2021 Discretionary Denials Have Passed 100, But Are Slowing - Law360
`
`Fish & Richa...
`News, cases, companies, firm
`
`Try our Advanced Search for more refined results
`
`Fish & Richardson
`My Account
`Emails & Alerts
`Newsletter Signup
`
`Close
`
`News, cases, companies, firm
`Search
`
`Search Law360
`Search News Only
`Search Cases Only
`Search PTAB Only
`Search TTAB Only
`
`Advanced Search
`
`Products
`Lexis®
`Law360 Pulse
`Law360 Employment Authority
`Law360 Tax Authority
`Law360 In-Depth
`Law360 UK
`Law360 Updates
`Law360 Podcasts
`Beta Tools
`Track docs
`Track attorneys
`Track judges
`
`Adv. Search & Platform Tools
`Browse all sections
`Banking
`Bankruptcy
`Class Action
`Competition
`Employment
`Energy
`Expert Analysis
`Insurance
`Intellectual Property
`Product Liability
`Securities
`Rankings
`Regional Powerhouses
`Law360's MVPs
`Glass Ceiling Report
`Law360 400
`Diversity Snapshot
`Practice Groups of the Year
`Rising Stars
`Titans of the Plaintiffs Bar
`Site Menu
`Join the Law360 team
`Search legal jobs
`Learn more about Law360
`Read testimonials
`Contact Law360
`Sign up for our newsletters
`Site Map
`Help
`
`Intellectual Property Securities Bankruptcy Competition Employment White Collar Legal Industry Access To Justice Law360 UK Pulse || See all
`sections
`
`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
`
`1
`
`EXHIBIT 1022
`
`
`
`7/21/2021
`
`2021 Discretionary Denials Have Passed 100, But Are
`Slowing
`
`2021 Discretionary Denials Have Passed 100, But Are Slowing - Law360
`
`By Dani Kass
`
`Share us on: By Dani Kass
`
`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
`
`2
`
`
`
`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.
`
`0 Comments
`
`Sign In To Comment
`
`Related Articles
`
`PTAB Filings Are Down, Institution Rate Is Up In FY 2021
`
`Fast Courts, Big Funders Kept Patent Suits Flowing In 2020
`
`PTAB Discretionary Denials Up 60%, Unified Patents Says
`
`https://www.law360.com/ip/articles/1403479/2021-discretionary-denials-have-passed-100-but-are-slowing?nl_pk=deaf734d-e64b-42ff-8e62-1741b2d8… 3/7
`
`3
`
`
`
`7/21/2021
`
`2021 Discretionary Denials Have Passed 100, But Are Slowing - Law360
`
`PTAB Discretionary Denials Harming Patent System, Atty Says
`
`A Proposed Alternative To PTAB Discretionary Denial Factors
`
`Here's What You Missed
`
`Trump Adviser Accused Of Unregistered Lobbying
`
`Girardi Investigations Fizzled Amid Watchdog's 'Mistakes'
`
`GOP Reps. Can't Sue Pelosi Over Proxy Voting, DC Circ. Says
`
`Husch Blackwell Moves Into New England With 11-Atty Firm
`
`Examiner Clears Sacklers Of Influencing Purdue's Board
`
`Legal Services Biz Epiq Can't Dodge Data Breach Suit
`
`Want To Avoid PTAB Discretionary Denials? Try A Stipulation
`
`Taylor Swift Says 'Shake It Off' Didn't Copy 'Players,' 'Haters'
`
`Avenatti To Represent Himself In Calif. Embezzlement Trial
`
`5th Circ. Won't Revive American Airlines ERISA Case
`
`Useful Tools & Links
`
`Add to Briefcase
`Save to PDF & Print
`Rights/Reprints
`Editorial Contacts
`
`Related Sections
`
`California
`Delaware
`Intellectual Property
`Massachusetts
`Texas
`
`Companies
`
`Apple Inc.
`Cisco Systems Inc.
`Google LLC
`Intel Corp.
`Unified Patents Inc.
`
`Government Agencies
`
`U.S. Patent and Trademark Office
`
`https://www.law360.com/ip/articles/1403479/2021-discretionary-denials-have-passed-100-but-are-slowing?nl_pk=deaf734d-e64b-42ff-8e62-1741b2d8… 4/7
`
`4
`
`
`
`7/21/2021
`
`2021 Discretionary Denials Have Passed 100, But Are Slowing - Law360
`
`Check out Law360's podcast, Pro Say, which offers a weekly recap of both the biggest stories and hidden gems from the world of law.
`Listen To Our Latest
`
`Top 10 trending in Intellectual Property
`
`1 'History Maker' Cunningham Draws High Praise From IP Attys
`2Novartis' Expert Denies Rival Atty's Plagiarism Claim In IP Trial
`3Albright Won't Let Apple Transfer IP Suit Out Of Texas
`4Tiffany & Co., Costco End Yearslong Trademark Dispute
`5Perkins Coie IP Atty Confirmed As Fed. Circ.'s 1st Black Judge
`6Novartis IP Expert Slams Rival's Royalties Estimate At Trial
`7Patent Suit Against HP Spinoff Settles For $68M
`8Ericsson, TCL Settle Wireless Tech Patent Licensing Battle
`9Astros Say Pitch Signs Too Conspicuous To Be Trade Secrets
`10Galderma Gets PTAB To Invalidate Wrinkle Treatment Patent
`
`Hello! I'm Law360's automated support bot.
`
`https://www.law360.com/ip/articles/1403479/2021-discretionary-denials-have-passed-100-but-are-slowing?nl_pk=deaf734d-e64b-42ff-8e62-1741b2d8… 5/7
`
`5
`
`
`
`7/21/2021
`How can I help you today?
`
`For example, you can type:
`
`2021 Discretionary Denials Have Passed 100, But Are Slowing - Law360
`
`I forgot my password
`I took a free trial but didn't get a verification email
`How do I sign up for a newsletter?
`
`Ask a question!
`
`×
`
`© 2021, Portfolio Media, Inc. | About | Contact Us | Legal Jobs | Careers at Law360 |
`Advertise with Law360 | Terms | Privacy Policy | Cookie Settings | Help | Site Map
`
`Ask a question!
`
`Already have access? Click here to login
`Get instant access to the one-stop news source for business lawyers
`
`Register Now!
`Sign up now for free access to this content
`
`Enter your details below and select your area(s) of interest to stay ahead of the curve and receive Law360's daily newsletters
`
`Email (NOTE: Free email domains not supported)
`
`First Name
`
`Last Name
`
`Password (at least 8 characters required)
`
`Confirm Password
`
`Select at least one primary interest:
` Access To Justice
` Asset Management
` Benefits
` Capital Markets
` Commercial Litigation Uk
` Construction
` Corporate Crime & Compliance Uk
` Employment
` Financial Services Uk
` Food & Beverage
` Hospitality
` Insurance
` International Arbitration
` Life Sciences
` Mergers & Acquisitions
` New York
` Private Equity
` Public Policy
` Securities
` Telecommunications
`
` Aerospace & Defense
` Banking
` California
` Class Action
` Competition
` Consumer Protection
` Cybersecurity & Privacy
` Energy
` Fintech
` Government Contracts
` Illinois
` Insurance Uk
` International Trade
` Massachusetts
` Native American
` Pennsylvania
` Product Liability
` Real Estate
` Sports & Betting
` Texas
`
` Appellate
` Bankruptcy
` Cannabis
` Commercial Contracts
` Compliance
` Corporate
` Delaware
` Environmental
` Florida
` Health
` Immigration
` Intellectual Property
` Legal Ethics
` Media & Entertainment
` New Jersey
` Personal Injury & Medical Malpractice
` Project Finance
` Retail & E Commerce
` Technology
` Transportation
`
`https://www.law360.com/ip/articles/1403479/2021-discretionary-denials-have-passed-100-but-are-slowing?nl_pk=deaf734d-e64b-42ff-8e62-1741b2d8… 6/7
`
`6
`
`
`
`7/21/2021
` Trials
`
`2021 Discretionary Denials Have Passed 100, But Are Slowing - Law360
`Law360 may contact you in your professional capacity with information
` White Collar
`about our other products, services and events that we believe may be of
`interest.
`
`You’ll be able to update your communication preferences via the unsubscribe link provided within our communications.
`
`We take your privacy seriously. Please see our Privacy Policy.
`Register
`×
`
`Sign up for our Intellectual Property newsletter
`
`You must correct or enter the following before you can sign up:
`
`Please provide a professional email:
`Select more newsletters to receive for free
`
`Law360 takes your privacy seriously. Please see our Privacy Policy.
`
`Thank You!
`
`No Thanks Sign up now
`
`https://www.law360.com/ip/articles/1403479/2021-discretionary-denials-have-passed-100-but-are-slowing?nl_pk=deaf734d-e64b-42ff-8e62-1741b2d8… 7/7
`
`7
`
`