In the aftermath of the March 24 guidance regarding Patent Trial and Appeal Board (PTAB) procedures, there has been a notable increase in the number of PTAB petition denials. This development followed the guidance centering on the application of the patent-owner favorable decision in Apple v. Fintiv. The ruling essentially allows PTAB judges and the Director of the US Patent & Trademark Office more discretion to deny petitions involving patents challenged in parallel infringement suits.
Data from this period reveals that out of 143 institution decisions made by the PTAB from March 24 to May 12, 36 were denied under the Fintiv precedent. This stands in stark contrast to the prior period, where no such denials were recorded after the Trump administration rescinded earlier Biden-era guidance on February 28. This shift underscores a heightened application of the Fintiv factors, particularly the timing of district court trial dates relative to PTAB final written decision dates.
The dominant factor noted in this context is whether the expected district court trial date will occur before the PTAB’s statutory final written decision date. An ongoing pattern suggests that securing an earlier final written decision date is becoming a primary strategy for petitioners to avoid Fintiv denials. Notably, 30 of the 36 cases with expected trial dates preceding the PTAB decision date were denied based on this timing factor.
In reviewing the landscape of PTAB petitions since the new guidance, Acting USPTO Director Coke Morgan Stewart has also adopted the bifurcated institution procedure, weighing expected trial dates heavily in the Fintiv analysis. Aside from traditional factors, new elements are emerging, as highlighted in cases like Tesla, Inc. v. Intellectual Ventures II LLC, where Stewart considered the PTAB as better suited for cases involving numerous patents with diverse subject matters.
The implications for legal professionals and corporations involved with patent disputes are clear: early action is crucial. Conducting preliminary searches for prior art and preparing petitions before a patent owner details asserted claims could provide a strategic advantage. Additionally, including a Sotera stipulation might favor petitioners when trial dates are ambiguous or closely follow the final written decision date, potentially tipping the balance toward institution.
While these developments indicate a shift in PTAB practices, they also highlight the increasing importance of strategic timing and comprehensive preparation in patent litigation. For those navigating these waters, understanding the intricacies of PTAB guidelines and the evolving application of Fintiv factors is critical to safeguarding interests in patent validity challenges. For further analysis, read the detailed examination by Ted Cannon on Bloomberg Law.