Patent Owner Tells PTAB Precedential Opinion Panel Fintiv Factor 2 Should Be Modified Post-Arthrex

By Eileen McDermott
October 15, 2021

Fintiv was decided when ALJs had the apparent authority to ‘render a final decision on behalf of the United States without any such review by their nominal superior or any other principal officer in the Executive Branch.’” – K.Mizra motion to POP


On October 8, a request was made on behalf of K.Mizra LLC asking the Patent Trial and Appeal Board’s (PTAB’s) Precedential Opinion Panel (POP) to review a PTAB institution decision on the ground that Apple Inc. v. Fintiv (IPR2020-00019) Factor 2 should be modified. Instead of comparing the proximity of the district court’s trial date to the projected time to a PTAB final written decision (FWD), the timing should account for completion of Director Review based on the Supreme Court’s ruling in Arthrex v. Smith & Nephew, said the motion. The issue has not been previously raised before the POP to IPWatchdog’s knowledge.

The Arthrex decision mandated that PTAB final written decisions (FWDs) must be appealable to the U.S. Patent and Trademark Office (USPTO) Director. In July of this year, the USPTO implemented an interim rule in response to Arthrex that allows for parties to request Director review of PTAB decisions during the interim phase of the rulemaking process.

Timely requests for Director Review must be filed within 30 days of a FWD, pursuant to agency regulations governing motion decisions codified at 37 CFR § 42.71(d). Requests for Director rehearing that are timely filed will reset the timing requirements for appeals of PTAB decisions or civil actions against the agency under 35 U.S.C. §§ 145 and 146 pursuant to agency regulations governing timing for appeals and civil actions codified at 37 CFR § 903(b).

Under Fintiv Factor 2, the “proximity of the court’s trial date” must be compared “to the Board’s projected statutory deadline for a final written decision.” But “Fintiv was decided when ALJs had the apparent authority to ‘render a final decision on behalf of the United States without any such review by their nominal superior or any other principal officer in the Executive Branch,” argues the motion. Thus, in light of the Arthrex decision, the Fintiv analysis should “compare the proximity of the court’s trial date to the Director’s projected deadline for final review.”

The motion relates to a petition for inter partes review (IPR) brought by Cisco Systems against K.Mizra in March 2021 requesting cancellation of certain claims of K.Mizra’s U.S. Patent No. 8,234,705 as obvious. In their September 24 institution decision, the PTAB panel said there is a reasonable likelihood that Cisco will prevail in proving the claims unpatentable and declined to exercise discretion under 35 U.S.C. § 314(a) to deny institution.

In its analysis of Factor 2 of the Fintiv analysis, the PTAB explained that the current Scheduling Order for the co-pending district court litigation proposes a trial date of June 6, 2022, about three months before the Board’s statutory deadline for a final written decision. The PTAB found this timing to be “reasonably close” and said the factor weighed slightly in favor of denial. However, the factors on the whole weighed in favor of institution.

In a footnote, the PTAB addressed K.Mizra’s argument that the Fintiv Factor 2 analysis should be based on the timing for a Director Review decision, and reasoned that the factor in its current form only applies to a final written decision and “not the time required to complete any subsequent rehearing requested by a party.”

Ultimately, concludes the request to the POP:

This issue presents a question of wide applicability and undermines the certainty and consistency of the Board’s application of discretion under 35 U.S.C. § 314(a) to deny institution. Accordingly, this issue warrants the attention of the Precedential Opinion Panel.

Michael Kim of Folio Law Group filed the request on behalf of K.Mizra.


The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 4 Comments comments. Join the discussion.

  1. Josh Malone October 15, 2021 9:01 am

    The NHK/Fintiv guidance is nonsensical. After they do the arithmetic they consult some crystal ball that tells them how much weight to give it. The parties never know if an earlier trial date means they get to proceed solely in the first venue, or whether they must proceed in multiple venues. This is crazy. It should be one venue.

    The PTAB ought to never interfere with an ongoing dispute in an Article III court. If the judge needs help from the USPTO he will ask for it.

    Instead big corporations are getting their friends at the PTAB to steal the case and invalidate most or all the the claims, usually held by a smaller competitor.

    There should be one venue, not two.

    The USPTO has exclusive jurisdiction over patent APPLICATIONS. They should focus there resources there rather than trying clawing back patents after a business has been built on the patented technology.

    After it issues, they should stand down unless and until the presiding judge requests assistance.

    We need to end this NHK/Fintiv arbitrary foolishness. It’s killing our ability to innovate.

  2. mike October 16, 2021 10:49 am

    Amen, Josh.

  3. Neutral Milk Hotel October 17, 2021 3:18 pm

    “The PTAB ought to never interfere with an ongoing dispute in an Article III court.”

    I … um, I mean, the PTAB was created TO interfere with an article III court, thats the whole point.

  4. mike October 18, 2021 10:11 am

    NMH: Um, no. The PTAB was created to be an alternative to district court litigation. Not to interfere with it. Otherwise you get conflicting results. How is it fair when a court rules a patent not invalid and the PTAB, using the same art and argument, renders a patent invalid. There can be no trust in the patent grant until at least this is resolved.

    Like Josh said “After [a patent] issues, [the USPTO] should stand down unless and until the presiding judge requests assistance.”

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