71 Am. U. L. Rev. 741 (2021).


The Leahy-Smith American Invents Act (AIA), passed by Congress in 2011, dramatically altered the landscape of patent litigation through the creation of new administrative post-grant proceedings for adjudicating patent validity disputes. One of these administrative proceedings, inter partes review (IPR), has proved immensely popular and polarizing. IPR proceedings have invalidated huge swaths of patents, making the decision whether to institute an IPR significant. The current uncertainty regarding whether an IPR proceeding will be instituted, or whether the Patent Trial and Appeal Board (PTAB or Board) will exercise its newfound expanded discretionary denial authority, continues to frustrate both petitioners and patent owners.

This Comment argues that the U.S. Patent and Trademark Office (USPTO) Director, who delegated their authority to the PTAB, does not have broad discretionary denial authority. Specifically, application of the six factors articulated in Apple Inc. v. Fintiv, Inc., violates both the plain meaning and legislative intent of 35 U.S.C. § 314(a). Congress intended IPR to be an efficient and specialized alternative to litigation in other forums, functioning to prune the unwieldy patent landscape. In creating IPR, Congress was not blind to the patent litigation landscape and accounted for the potential of parallel proceedings in the statutory scheme it created. The PTAB has inconsistently denied institution of meritorious IPR petitions by relying on its discretion under Fintiv, flying in the face of congressional intent, creating the very inefficiencies Congress sought to remedy, and encouraging forum shopping and venue bias. Continued application of the Fintiv policy threatens to dismantle the entire IPR system, leaving “bad” patents to fester, which decreases the overall credibility of the U.S. patent system.

* Senior Federal Circuit Editor, American University Law Review, Volume 71; J.D. Candidate, May 2023, American University Washington College of Law; B.S. Biology and Psychology, 2013, Georgetown University; M.S. Special Education, 2015, The City University of New York, Brooklyn College. Thank you to the entire Law Review staff for your diligence and feedback throughout this process. A special thank you to Latham & Watkins Partner, Jonathan M. Strang, my editor, Madeline Corkett, and my faculty advisor, Professor Jonas Anderson, for their insightful comments, inspiration, and guidance. Thank you also to my family and friends for their patience, advice, and constant enthusiasm; I appreciate your unwavering support and encouragement throughout my law school career.

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