The IPWatchdog interviewed Finnegan partner Joshua Goldberg on the biggest moments in intellectual property for 2022.
“Last year I couldn’t talk to clients about the Patent Trial and Appeal Board (PTAB) without also talking about the PTAB’s precedential Fintiv decision. It was the topic of conversation. That changed this year,” said Goldberg.
Providing further insight, Goldberg went on to say, “The Director’s June 21 Interim Procedure for Discretionary Denials brought clarity to when the PTAB would and wouldn’t apply Fintiv to deny institution. At least for now, we know on the petitioner side what we can do to avoid Fintiv: ensure our petitions include compelling, meritorious challenges or stipulate not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. And we know on the patent owner side when it may make sense to skip Fintiv in our preliminary responses, namely, when the only helpful trial date is in an ITC proceeding, which can no longer be the basis of a Fintiv denial. Armed with this additional knowledge and the ability to present statistics on median time-to-trial for civil actions in the relevant district court, we are now able to more accurately predict how Fintiv will or won’t impact our cases. Time to stop talking about Fintiv and focus on the substantive arguments.”
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