On May 9, 2019, Justin Oliver was quoted in Law360 regarding the Patent Trial and Appeal Board's (PTAB) designation of its decision in NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc. as precedential.
According to the article, the PTAB shut down NHK's request for inter partes review (IPR) of a patent related to a component in hard disk drives that the company has been accused of infringing. The board exercised its discretion to deny review when the same arguments or evidence were previously considered by the patent office.
More unusual was the PTAB's additional finding that review wouldn't be an efficient use of resources, because trial in the district court case was just months away. The PTAB pointed out that NHK relied on the same invalidity arguments and the same evidence in both forums.
Legally, an accused infringer has one year to request review of the patent from the time they are sued. But companies have some incentives not to wait until the last minute to go to the PTAB. Courts, for example, may be more inclined to pause the infringement case if the board institutes review early.
"This adds yet another reason to file your IPR sooner," said Oliver.