Intel backs Mylan's anti-Fintiv SCOTUS stance
Intel has backed Mylan's bid to convince the US Supreme Court to remove the controversial NHK-Fintiv rule, on the basis that it is “unlawful”.
The rule allows the Patent Trial and Appeal Board (PTAB) to refuse to institute an inter partes review (IPR) of a patent or patents also subject to parallel litigation in US district courts.
In August, Mylan claimed in a petition that the rule unfairly denies legitimate patent challenges.
The rule has been met with considerable criticism, particularly from frequent petitioners who note the “dramatic” decrease in the rate of instituted reviews at the board.
Mylan claimed that the board has wielded the NHK-Fintiv Rule to terminate scores of timely filed petitions since March 2020 and that the “rule” is not “the product of a formal rulemaking”.
A ‘perverse rule’
In its petition filed on September 13, Intel also decried the rule, stating that it leads to “perverse and unjustifiable outcomes, and that it also “exceeds the PTAB’s statutory authority and violates the Administrative Procedures Act”.
The tech company further argued that the PTAB’s NHK-Fintiv rule cannot be reconciled with Congress’s fundamental purpose in creating the IPR.
“The rule thus renders inter partes review unavailable in the very situations in which Congress thought it was most necessary. That perverse result cannot be reconciled with the America Invents Act’s provisions governing the interaction of inter partes review and district court litigation. The NHK-Fintiv rule therefore exceeds the PTAB’s statutory authority,” said the brief.
The petition held that the upshot is that companies such as Intel are denied IPRs for reasons that not only have nothing to do with the merits of their invalidity contentions, but that are based on fundamental misjudgments about the state of play between the parties.
‘Death knell’ for generics’ IP rights
The rule also encourages litigants to split validity issues between their IPR petitions and district-court proceedings to maximise the chance of institution, undermining the IP rights system’s error-correction function, according to Intel.
Intel further noted that while it had defended its innovations as a patent-litigation plaintiff in the past, over the last 15 years it had increasingly been a defendant in suits filed by sophisticated non-practising entities seeking return on litigation as a portfolio investment strategy.
On the same day, the Association for Accessible Medicines also filed a petition in support of Mylan, in which the generics industry body criticised the rule as a “death knell” for the IP rights of generic drug makers.
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