On June 22, U.S. Patent and Trademark Office Director Kathi Vidal issued new guidance on when the Patent Trial and Appeal Board (PTAB) may deny requests to review patents based on parallel litigation. The guidance is intended to clarify when the PTAB should use discretionary denials and to reduce the number of denials. It also clarifies when the PTAB can deny review using Fintiv factors. Finnegan partner Josh Goldberg explained that the number of PTAB denials using Fintiv factors has declined in recent months. He added that the director's guidance memo helps to formalize the PTAB's practices and will make it less likely that a parallel case will cause the PTAB to deny patent review.
Josh stated, "I think the bottom line is that the memo provides a lot more clarity and a lot more predictability, and it's probably going to reduce the amount of Fintiv denials."
Additionally, the memo explained that the PTAB has stopped denying petitions under Fintiv when there is a parallel International Trade Commission (ITC) investigation, as the ITC does not have the authority to invalidate patents, thus helping to further memorialize the practice. Josh added that until now, "it wasn't publicly stated that this was going to be the way it was, and this was going to apply across the board."
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