'Fintiv' Patent Review Denials Fall as Calls to End Rule Persist

The ruling in Apple v. Fintiv established framework at the United States Patent and Trademark Office (USPTO) that allows the Patent Trial and Appeal Board (PTAB) to deny review of patent challenges if there is a parallel infringement litigation advancing at a federal district court or trade agency. The usage of the rule has dropped to 10% in the recent months, compared to 40% when the rule was first established in May 2020. The reduction of use has caused patent practitioners to question whether the rule should continue to exist. One of the major reasons for the decline is due to an adjustment by challengers at the PTAB and an agreement to avoid certain invalidity arguments in patent infringement cases.

Finnegan partner Josh Goldberg explained that the Sotera v. Masimo Wireless case caused an adjustment period in which lawyers learned how to properly navigate the waivers. He said, “Parties are getting used to it and seeing how the board is treating different cases after Sotera...It’s becoming more predictable. Petitioners and patent owners alike—they’re able to better make decisions about how to address it.”

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