The Patent Trial and Appeal Board (PTAB)’s use of patent challenge denials based on co-pending litigation has reduced since its peak in 2021 following the precedential Fintiv decision. The decrease in denials can be attributed to patent challengers finding strategies to avoid denials, such as by agreeing to remove certain arguments from district court proceedings. Still, Senator Patrick Leahy and co-sponsors have introduced a bill, the PTAB Reform Act of 2022, that would effectively limit Fintiv denials. Law360 interviewed Finnegan partner Kevin Rodkey to discuss the proposed bill.
Kevin explained that petitioners will need to adjust their filing strategy in lieu of the potential bar on filing multiple petitions on a single claim over various days. He explained that multiple petitions can be used for legitimate reasons and are not always ill-intended.
Kevin added, “That’s the kind of thing we see a lot. When the original Fintiv precedential decision came out, institution rates went down; petitioners adjusted their strategies to adjust to the new landscape. I think this is something else here petitioners and patent owners will adjust to. The bill looks like the senators appear to be trying to give us more clarity on how to proceed with these types of reviews.”
In concluding that the bill is an opportunity for lawmakers to clarify expectations for the PTAB after a decade of existence, Kevin noted, “They’ve tried to course-correct certain things that they didn’t anticipate in the original America Invents Act.”
Read “Fintiv Denials Are Down, But Bill Banning Them Still Has Teeth”
