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ARTICLE · 06 NOVEMBER 2019

NHK § 314(a) Analysis Results in Denial

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The status of a parallel district court proceeding may provide a basis for the PTAB to deny institution of an IPR pursuant to § 314(a).

United StatesIntellectual Property
Matthew Johnson
Matthew Johnson
Thomas Ritchie
Thomas Ritchie
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The status of a parallel district court proceeding may provide a basis for the PTAB to deny institution of an IPR pursuant to § 314(a). NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sep. 12, 2018) (precedential). The rationale underlying this precedent is that proceeding in parallel with district court litigation may be an inefficient use of the PTAB's time and resources should the district court trial conclude before the PTAB issues its final written decision. Id. at 11.

As previously reported, the PTAB applied the NHK analysis to deny institution of a timely filed IPR due to a district court trial scheduled eleven months in the future. E-One, Inc. v. Oshkosh Corp., IPR2019-00161, Paper 16 (PTAB May 15, 2019); see No IPR Institution Due to a District Court Trial Eleven Months Away. In another recent case, the PTAB denied institution where the district court trial was set for nine months in the future. Next Caller Inc. v. TRUSTID, Inc.,

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