Fintiv-based PTAB decision faces scrutiny from Vidal
USPTO director’s decision to step in puts more spotlight on controversial rule | Vidal uses remit granted by US v Arthrex.
The director of the US Patent and Trademark Office, Kathi Vidal has confirmed that she will review a decision not to assess a gaming patent under the guidelines set out by the controversial NHK-Fintiv rule.
Vidal issued the order confirming that she had initiated the review on Friday, September 2, following mounting speculation that she would address the issues created by the rule since she took up her role last April.
Instituted by her predecessor Andrei Iancu, the rule holds that the existence of a parallel district court lawsuit or any overlap between the issues in both proceedings should preclude an inter partes review (IPR) of a patent by the US Patent Trial and Appeal Board (PTAB).
Tech giants including Apple and pharma companies such as Mylan and Edwards Lifesciences have argued that the rule compromises the integrity of the US patent system by protecting poor quality patents.
In September, Senators Patrick Leahy and Republican Senator John Cornyn introduced a new bill, the Restoring the America Invents Act, arguing against the use of discretionary denials which they argued led to poor quality patents.
On August 9, the PTAB decided not to review a Skillz Platform gaming patent under the Fintiv rule because it had been invalidated separately by a district court in California.
But Vidal said on Friday that the PTAB decision “raises issues of particular importance to the office and the patent community,” and that she would proceed with a director review.
Vidal’s decision is a use of the USPTO director’s authority bestowed by the US Supreme Court in its landmark US v Arthrex ruling, which held that the PTAB’s administrative judges are unconstitutionally appointed.
This comes after Vidal announced earlier this month that she would review the PTAB’s decision not to take up the challenge of reviewing a pig virus vaccine patent.
At the start of the year, patent experts told WIPR that under Vidal’s the PTAB would be forced to “finally promulgate rules on discretionary denial considerations, such as Fintiv, following criticism faced by the interim director Drew Hirshfeld’s decision not to institute director reviews during his tenure.
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