The rise of discretionary denials at the Patent Trial and Appeal Board has been well documented. One relatively new basis for denying institution under the PTAB’s discretionary authority provided in the precedential NHK Spring v. Intri-Plex Technologies decision has been based on the status of a parallel U.S. District Court litigation. In particular, the PTAB was concerned about the judicial inefficiencies that would result when the district court litigation went to trial before the PTAB would reach its final written decision.

A year after NHK Spring was made precedential, the PTAB provided a six-factor framework in Apple v. Fintiv to guide its analysis in cases the district court schedule set for trial before the statutory deadline for the PTAB to render a final written decision. Fintiv caused some practitioners to question whether it would still be possible to obtain institution of inter partes review petitions whether there was a pending district court action on the same patent in a jurisdiction that routinely set relatively early trial dates.