Fintiv Guidance Vexes Doctrine’s In-House Backers and Critics

The U.S. Patent and Trademark Office (USPTO) issued a memorandum on June 22, 2022, which provided guidelines for the Patent Trial and Appeal Board (PTAB) when denying patent review. The memo outlined that the PTAB may not deny petitions for review when the petitioner presents compelling evidence of unpatentability. Some industry experts suggest that the change in guidelines may lead to a reduction in denials of post-grant reviews (PGRs).

Finnegan partner Josh Goldberg explained that the PTAB already looks at whether claims are more likely than not to be unpatentable when reviewing PGR petitions. He added that if petitioners meet the standard for institution of PGRs then they should also meet the threshold for avoiding Fintiv.

The memorandum may also allow for more clarity for the PTAB when evaluating trial dates. Josh stated that many PTAB panels have begun to put less weight on trial dates set by district court judges, and the USPTO guidance further helps to provide certainty for counsel on how the panel will evaluate the trial date. He added, “Petitioners can make better decisions about whether to file IPRs and patent owners can better predict whether citing Fintiv will be a good strategy for them.”

In concluding, Josh suggested that if a petitioner's strategy is to win its case at the PTAB, they might want to raise Sotera stipulations to avoid Fintiv.

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