On January 18, the Supreme Court denied petitions for writs of certiorari from both Apple and Mylan Laboratories. Each company sought to challenge the NHK/Fintiv framework that was developed by the Patent Trial and Appeal Board (“the Board”). As we previously wrote about on this blog in September of last year, the NHK/Fintiv rule comes from two precedential Board decisions (NHK Spring v. Intri-Plex and Apple v. Fintiv) and, essentially, allows the Board to deny institution of an inter partes review (IPR) where a parallel litigation is occurring in federal court.
Apple and Mylan’s petitions arose from similar grounds, namely after the Court of Appeals for the Federal Circuit (“the CAFC”) refused to review the Board’s denial of each company’s respective IPR petitions. In rejecting Apple’s appeals, the CAFC cited to its own decisions where it held that Board decisions regarding institution are unappealable. The CAFC also cited the Supreme Court’s 2020 decision in Thryv v. Click-to-Call Technologies.
Apple’s petition argued that the Board’s NHK/Fintiv rule is unlawful on several grounds, including that it exceeds the authority of the Director of the U.S. Patent and Trademark Office (“the PTO”), that the rule is arbitrary and capricious, and that it was adopted without following the requirements of the Administrative Procedure Act. Mylan petitioned on similar grounds, notably arguing that the failure to follow the Administrative Procedure Act meant that the NHK/Fintiv rule never went through the notice-and-comment rulemaking process, and thus the public was never able to weigh in on the rule’s alleged defects.
The Supreme Court, however, rejected Apple and Mylan’s requests without explanation. This leaves unreviewed the patents challenged by Apple and Mylan, which belong to Optis Cellular Technology and Jannsen Pharmaceuticals, respectively.
The Supreme Court’s denial of certiorari comes a little over a week after the Northern District of California dismissed a suit filed by Apple, Cisco, Google, and Intel that challenged the NHK/Fintiv rule on the grounds that it violates the Administrative Procedure Act. However, the recent rejections of these challenges to the Board’s discretionary denials does not signal the end of attempts to curtail the NHK/Fintiv rule. For example, the Restoring the America Invents Act, which was introduced by Senators Leahy and Cornyn late last year, would limit the Board’s discretionary denials.