直 Japanese PDF Font
  • Our Professionals
  • Our Work
  • Our Insights
  • Firm
  • Careers
Finnegan
    • At the PTAB Blog
    • European IP Blog
    • Federal Circuit IP Blog
    • INCONTESTABLE® Blog
    • IP Health Blog
    • Prosecution First Blog
  • Articles
  • IP Updates
  • Podcasts
  • Events
  • Webinars
  • Books

At the PTAB Blog

California District Court Says Cuozzo Bars NHK-Fintiv Challenges

November 22, 2021

By William C. Neer; Matthew R. Ritter

Edited by Shannon M. Patrick; Amanda K. Murphy, Ph.D.

In Apple, Inc. v. Iancu,[1]Judge Edward Davila dismissed a lawsuit brought by tech companies who had asked to set aside the “NHK-Fintiv rule.”[2]This rule allows the Patent Trial and Appeal Board (PTAB) to consider various factors when determining whether to institute review of a patent that is asserted in ongoing parallel district court litigation.[3] 

Rather than appealing specific PTAB decisions where the NHK-Fintiv rule was used to deny institution, Plaintiffs’ complaint challenged the administrative framework of the PTAB’s precedential opinions. Plaintiffs presented three arguments: 1) the Director exceeded statutory authority in adopting the NHK-Fintiv rule; 2) the NHK-Fintiv rule is arbitrary, capricious, and violates the AIA; and 3) the NHK-Fintiv rule is a final, binding rule that was issued without notice-and-comment rulemaking. In response, the Government filed a motion to dismiss alleging that Plaintiffs lacked standing and that the issues were not justiciable under the Administrative Procedure Act.

The Court granted the Government’s motion to dismiss, finding that Plaintiffs had standing to bring the case, but that the issues were not justiciable in light of the Supreme Court’s decisions in Cuozzo[4]and Thryv.[5]

Regarding standing, the Court found that Plaintiffs had established an injury-in-fact based on the PTAB’s denial of an opportunity to obtain the benefit of inter partes review (IPR) through the application of the NHK-Fintiv rule. The Court also found the complaint showed a causal connection between the NHK-Fintiv rule and diminished opportunity to experience the benefits of IPR. Finally, the Court concluded that injury was redressable by the ability to enjoin the Director from applying the NHK-Fintiv rule.

After finding standing, the Court addressed the justiciability of Plaintiffs’ arguments. The Court examined the underlying rational of Cuozzo and Thryv, which held that issues closely related to the Director’s decision to institute an IPR petition are non-appealable under 35 U.S.C. § 314(d). Relying on this precedent, the Court found that it “cannot deduce a principled reason why preclusion of judicial review under § 314(d) would not extend to the Director’s determination that parallel litigation is a factor in denying IPR.”[6]The Court then concluded that § 314(d) bars Plaintiffs’ challenge and granted the Government’s motion to dismiss.


[1]No. 5:20-cv-06128-EJD (N.D. Cal. Nov. 10, 2021).

[2] Apple Inc. v. Fintiv, Inc. and NHK Spring Co. Ltd. v. Intri-Plex Technologies, Inc. are two PTAB cases that the Director designated as precedential. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (designated precedential on May 5, 2020) and NHK Spring Co. Ltd. v. Intri-Plex Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (designated precedential on May 7, 2019). Although these cases are precedential PTAB opinions, the Court refers to them as the “NHK-Fintiv rule.”

[3]For a detailed discussion of the NHK-Fintiv rule, please see Brooke M. Wilner et al., PTAB Designates Decision on Discretionary Denial as Precedential, https://www.finnegan.com/en/insights/blogs/at-the-ptab-blog/ptab-designates-decision-on-discretionary-denial-as-precedential.html.

[4]Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).

[5]Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020).

[6]Apple, Inc. v. Iancu, No. 5:20-cv-06128-EJD, at *10 (N.D. Cal. Nov. 10, 2021).

Tags

Apple, Inc., Patent Trial and Appeal Board (PTAB), institutional decision, Precedential, 35 U.S.C. § 325(d), District Court, Administrative Procedure Act (APA)

Related Practices

Post-Grant Proceedings

IPR, PGR, and CBM

Appeals of PTAB Trial Decisions

Related Industries

Electronics and Information Technology

Electronic Devices and Components

Electrical and Computer Technology

Related Offices

Atlanta, GA

London

Washington, DC

Contacts

William C. Neer
Associate
Washington, DC
+1 202 408 4104
Email
Matthew R. Ritter
Associate
Washington, DC
+1 202 408 4172
Email
Shannon M. Patrick
Associate
Atlanta, GA
+1 404 653 6558
Email
Amanda K. Murphy, Ph.D.
Partner
London
+44 (0)20 7864 2800
Email

Copyright © 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. 


DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

Related Insights

Conference

California Intellectual Property Law Institute 2022

October 17-18, 2022

San Francisco

Conference

2022 AIPPI World Congress

September 10-13, 2022

San Francisco

Conference

2022 Lavender Law Conference & Career Fair

July 27-29, 2022

Los Angeles

Conference

Breaking the Concrete Ceiling: How Women of Color Overcome the Invisible Barrier

June 16, 2022

Washington, DC

Hybrid Conference

2022 Bench & Bar Conference

June 15-18, 2022

Sea Island

Webinar

Patent Drafting for Cryptocurrency Innovations: Overcoming Eligibility Challenges, Minimizing the Risks of Rejection

June 14, 2022

Webinar

Conference

Diversity, Equity, and Inclusion Summit

June 10, 2022

Virtual

Seminar

Practical Tips: European and US IP Practice Seminar

June 9, 2022

London

Webinar

Manufacturing Monetization: Due Diligence Before Licensing or Litigating Your Patent Portfolio

June 8, 2022

Webinar

Due to international data regulations, we’ve recently updated our privacy policy. Click here to read our privacy policy in full.

We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.

  • Privacy
  • Disclaimer
  • EEO Statement

© 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP