December 7, 2021

Volume XI, Number 341


December 06, 2021

Subscribe to Latest Legal News and Analysis

California District Court Says Cuozzo Bars NHK-Fintiv Challenges

In Apple, Inc. v. Iancu,[1]Judge Edward Davila dismissed a lawsuit brought by tech companies who had asked to set aside the “NHK-Fintiv rule.”[2]This rule allows the Patent Trial and Appeal Board (PTAB) to consider various factors when determining whether to institute review of a patent that is asserted in ongoing parallel district court litigation.[3] 

Rather than appealing specific PTAB decisions where the NHK-Fintiv rule was used to deny institution, Plaintiffs’ complaint challenged the administrative framework of the PTAB’s precedential opinions. Plaintiffs presented three arguments: 1) the Director exceeded statutory authority in adopting the NHK-Fintiv rule; 2) the NHK-Fintiv rule is arbitrary, capricious, and violates the AIA; and 3) the NHK-Fintiv rule is a final, binding rule that was issued without notice-and-comment rulemaking. In response, the Government filed a motion to dismiss alleging that Plaintiffs lacked standing and that the issues were not justiciable under the Administrative Procedure Act.

The Court granted the Government’s motion to dismiss, finding that Plaintiffs had standing to bring the case, but that the issues were not justiciable in light of the Supreme Court’s decisions in Cuozzo[4]and Thryv.[5]

Regarding standing, the Court found that Plaintiffs had established an injury-in-fact based on the PTAB’s denial of an opportunity to obtain the benefit of inter partes review (IPR) through the application of the NHK-Fintiv rule. The Court also found the complaint showed a causal connection between the NHK-Fintiv rule and diminished opportunity to experience the benefits of IPR. Finally, the Court concluded that injury was redressable by the ability to enjoin the Director from applying the NHK-Fintiv rule.

After finding standing, the Court addressed the justiciability of Plaintiffs’ arguments. The Court examined the underlying rational of Cuozzo and Thryv, which held that issues closely related to the Director’s decision to institute an IPR petition are non-appealable under 35 U.S.C. § 314(d). Relying on this precedent, the Court found that it “cannot deduce a principled reason why preclusion of judicial review under § 314(d) would not extend to the Director’s determination that parallel litigation is a factor in denying IPR.”[6]The Court then concluded that § 314(d) bars Plaintiffs’ challenge and granted the Government’s motion to dismiss.

[1]No. 5:20-cv-06128-EJD (N.D. Cal. Nov. 10, 2021).

[2] Apple Inc. v. Fintiv, Inc. and NHK Spring Co. Ltd. v. Intri-Plex Technologies, Inc. are two PTAB cases that the Director designated as precedential. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (designated precedential on May 5, 2020) and NHK Spring Co. Ltd. v. Intri-Plex Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (designated precedential on May 7, 2019). Although these cases are precedential PTAB opinions, the Court refers to them as the “NHK-Fintiv rule.”

[3]For a detailed discussion of the NHK-Fintiv rule, please see Brooke M. Wilner et al., PTAB Designates Decision on Discretionary Denial as Precedential.

[4]Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).

[5]Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020).

[6]Apple, Inc. v. Iancu, No. 5:20-cv-06128-EJD, at *10 (N.D. Cal. Nov. 10, 2021).

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 326

About this Author


William Neer’s practice encompasses patent litigation and prosecution in the areas of chemicals, cosmetics, plants, and pharmaceuticals.  

William worked as a summer associate at Finnegan, where he assisted with a variety of matters, including complex pharmaceutical patent litigation under Hatch-Waxman, proceedings before the Patent Trial and Appeal Board (PTAB), and patent prosecution.

During law school, William served as a judicial intern at the U.S. Court of Appeals for the Federal Circuit. He also interned for Unified Patents, LLC.

While completing his...

+1 202 408 4104
Law Clerk

Matthew Ritter is a law clerk in Finnegan’s Washington, DC office.


Shannon Patrick focuses on patent litigation related to Abbreviated New Drug Applications (ANDA), patent prosecution, proceedings before the Patent Trial and Appeal Board (PTAB), and client counseling. She has technical experience in the chemical and mechanical fields, including technologies such as aluminum alloys and joining solutions, as well as a background in biology.

Shannon’s litigation experience with district court matters includes preparing motions, managing discovery efforts, and working with expert witnesses. She has participated in...

404 653 6558
Amanda Murphy IP Lawyer Finnegan

Amanda Murphy, Ph.D., focuses her practice on strategic client counseling, portfolio management, and patent prosecution for a range of clients, including small startup companies, research foundations, and large biotechnology and pharmaceutical companies.

Amanda provides patentability opinions, prepares new patent applications, prosecutes U.S. and foreign applications, and represents appellants before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has experience in prosecuting inter partes ...

202 408 4114