A recent trend at the PTAB has shown timing is everything, and bad timing is held against Petitioner when considering discretionary denial.

In two recent denials, NHK v. IntriPlex and NetApp v. Realtime, the Board found the straw that broke the camel’s back for discretionary denial was that any final written decision would issue after the scheduled trial date in related district court litigation.

In each of these two cases, among other factors, the Board relied on the late stage and state of a related district court case to find an AIA trial a waste of judicial resources. Each time Petitioner filed its petition near the end of a district court case that included similar evidence and arguments. Each time the Board found the district court would resolve the issues before the Board would. So the Board found the AIA proceedings should not be instituted.

Petitioners need to take this into account when determining timing of their petitions. And if filing late becomes a necessity, Petitioners should include arguments distinguishing these two decisions. Conversely, Patent Owners need to consider this challenge in their preliminary responses as a reason for denial.