A gavel [Pexels]
Apple, Google, and a number of other tech companies have failed to convince a court that the U.S. Patent and Trademark Office’s rule denying some inter partes reviews of patents is illegal.
Apple, along with Google, Cisco, Intel, and Edwards Lifesciences have repeatedly tried to get rid of the NHK-Fintiv rule implemented by the USPTO that allowed judges more leeway to deny petitions from companies for an inter-partes review (IPR.)
The latest attempt resulted in the U.S. District Court for the Northern District of California denying the companies’ motion for summary judgment, siding instead with the USPTO, reports Reuters.
The complaint itself is all about whether challenges and petitions for an IPR by the USPTO’s Patent Trial and Appeal Board are allowed to proceed or get denied. The IPR is a way for the PTAB to reconsider whether a patent’s claims are still valid, which can potentially weaken a patent or effectively kill it off.
The NHK-Fintiv rule was created by the PATB to determine whether to deny or delay the review of a patent application if there is an ongoing parallel proceeding at thePTB or in federal court that could affect the IPR itself.
Using the rule, USPTO judges were more easily able to deny an IPR from taking place, which the companies naturally disagreed with due to it potentially affecting their lawsuits.
The ruling from U.S. District Judge Edward Davila states that the USPTO wasn’t required to hold a notice-and-comment period before actually creating and implementing the rule. The rule was also a “general statement of policy” and not a substantive rule that needed public commentary.
This is not the first time that the USPTO has been challenged over the rule. A 2020 attempt by companies claimed federal law was violated. Davila dismissed that suit in 2021 due to U.S. Supreme Court rulings stating PATB decisions on IPR petitions could not be appealed.
The latest action was prompted by a 2023 decision by the Federal Circuit ruling that the USPTO may have needed to hold the public notice and comment period.
