TAKEAWAY: The Supreme Court denied two cert petitions requesting review of the PTAB’s rule allowing factor-based, discretionary denial of post-grant petitions, suggesting that further developments may be in the next USPTO Director’s hands.

On Tuesday, January 18, 2022, the United States Supreme Court denied two petitions for writs of certiorari—one filed by Apple and the other by Mylan—seeking review of the Patent Trial and Appeal Board’s NHK-Fintiv rule established fairly recently under Apple Inc. v. Fintiv, Inc. (IPR2020-00019, Paper 15, May 13, 2020). The denials suggest that the Court may likewise deny a similar cert petition filed by Intel in late 2021 that remains pending.

The NHK-Fintiv rule allows the PTAB to consider parallel litigation when deciding whether to institute a post-grant petition in the USPTO. Under the NHK-Fintiv framework, the PTAB weighs the following six factors when deciding whether to institute: (1) likelihood that the parallel litigation will be stayed if review is instituted; (2) proximity of the trial date to the projected deadline for a final written decision; (3) investment in the parallel proceeding; (4) overlap of issues raised in the petition and in the parallel proceeding; (5) whether the petitioner and patent owner are parties to the parallel proceeding; (6) other circumstances, such as the merits of the petition. Critics of the NHK-Fintiv rule have argued that it gives the PTAB broad discretion to deny post-grant petitions that unduly restricts access to the mechanisms for challenging issued patents established by the America Invents Act.

The future of the rule may well rest with the next director of the USPTO. President Biden’s nominee, Kathi Vidal, has yet to be confirmed by the Senate. If confirmed, Vidal would have the authority to implement policy changing the way the PTAB exercises its discretion to institute. Given the Supreme Court’s denials of the Apple and Mylan cert petitions, parties involved in post-grant proceedings may choose to look to the next USPTO director to gauge the rule’s implementation and longevity.