314(a) Practices Evolve

Discretionary denials of AIA trial petitions under 314(a) have fallen significantly over the past few months. But, Fintiv practices are not quite dead yet. As noted by IPWatchdog last week, although less frequent, occasional denials still occur.

Certainly the WDTX is no longer the silver bullet to the PTAB. That is, recent congressional inquiry asserting that its

trail dates are suspect , has highlighted that the agency should expect to reach a decision before the Court. Yet, the agency should not expect petitioners to make that point in their filings.

In a PGR denied earlier this month in view of a WDTX trial date ( here ), the Board cited Fintiv for the proposition that it “generally takes courts’ trial schedules at face value absent some strong evidence to the contrary.” Of course, there is ample evidence to the contrary — at least for WDTX — but the Board shouldn’t expect petitioners to highlight it.

In this PGR decision the petitioner did not address the 314(a) issue at all in its petition with a WDTX trial set for February of 2023, did not seek a Reply on 314(a) when the Patent Owner argued it in its Preliminary Response, and did not file a Sotera Stipulation . All of this was seemingly deliberate (and for good reason as explained below). Not surprisingly, the PTAB denied the petition on 314(a) grounds, and cited the above mentioned Fintiv quote.

The panel’s use of the quote is certainly a bit awkwardgiven the congressional lambasting the agency has taken for giving credit to WDTX trial dates , and perhaps the panel could have simply taken official notice of well-publicized inquiry to the agency on this point. But, in fairness, PTAB panels are insulated from the motivation of filers. That is, from the Board’s perspective the petitioner did not even try to make a 314(a) argument of any kind with respect to the trial date being unreliable, or address potential overlap (via Sotera stip), so why should it step in to save the petitioner?

While I can only speculate as to petitioner’s rationale, I have a very strong suspicion that the petitioner was being sensitive to the WDTX court given the approaching trial date. Trashing the Court’s scheduling practices under 314(a) would certainly not be a way to endear oneself to Judge Albright in the months leading up to a trial. To the extent there was an uncertainty in your trial schedule, you can bet that date would stick after such an argument. Moreover, given the Judge’s practices, he certainly was not going to stay the case pending the PGR either. And, given this was a PGR filing, a Sotera stipulation would have resulted in a large estoppel footprint that would have loomed large over the entire invalidity trial defense. A prudent petitioner really isn’t left with much to say or do, and, is arguably better (at least from the district court perspective) off not saying or doing anything in this context.

Within the next few weeks the PTAB is expected to announce some changes to its Fintiv practices,which I previewed last month. Hopefully, the reality of presenting “strong evidence to the contrary” on a court’s trial date is considered by the agency. Attacking district court practices and ability to deliver on a scheduled trial date is not something the agency should expect from a prudent petitioner. Rather, as I have pointed out, along with members of Congress, it is incumbent upon the agency to apply an average time to trial in assessing such 314(a) scenarios.