As promised, U.S. Patent and Trademark Office Director Kathi Vidal is quickly using her authority to issue binding agency guidance to “course correct” how the Patent Trial and Appeal Board (PTAB) reviews patents.
On June 21, 2022, Vidal issued a memorandum regarding when the PTAB may deny patent reviews based on parallel litigation. The guidance delivers new wrinkles in how the PTAB’s precedential decision in Apple Inc. v. Fintiv, Inc. will be applied going forward.
Here are the key takeaways:
Fintiv does not apply to ITC proceedings;
- Fintiv does not apply when the Petitioner agrees to a Sotera stipulation;
- Fintiv does not apply when the Petition shows a “compelling challenge”; and
- For “anticipated conclusion” factor, the PTAB will use the District Court’s median time to trial.
While couched as “guidance,” the practical impact is clearly designed to weaken Fintiv in the future.
Most of the changes are clear except for what constitutes a “compelling challenge,” which has been left undefined. At a minimum, the test is higher than that for institution (a reasonable likelihood that the petitioner would prevail on one or more claims or more likely than not that petitioner would prevail on one or more claims for an IPR and PGR, respectively).
As the Director said, “Where the information presented at the institution stage is merely sufficient to meet the statutory institution threshold, the PTAB has the authority, where warranted, to exercise discretion to deny institution in view of the other Fintiv factors. In contrast, where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not Discretionarily deny institution under Fintiv.”
The reality is if a Panel thinks a few claims may be unpatentable, but the petition is weak overall (given that the Panel must institute on all or no claims), the Panel likely can and will use Fintiv to take a shorter path to get to the same result.
That means the Panel can write a short Fintiv analysis and be done with it rather than having to write an entire decision on the merits by explaining every claim construction and analysis and why, despite a few unpatentable claims, the Panel will not hear the case.