Takeaway: The well-known Fintiv rule, which states that the Patent Trial and Appeal Board (PTAB) must not hear patent validity challenges if the same patent proceeding is pending in a parallel U.S. district court, could soon be jolted if Senator Leahy succeeds in getting enough support to pass his new bill aimed at redefining what PTAB judges are and are not allowed to do.
Senator Patrick Leahy recently announced a bipartisan bill to stop PTAB judges from factoring in the timing of parallel litigation when deciding whether to review a patent. According to Senator Leahy, his goal is to shut down the Fintiv rule and to instead focus on strengthening the board created under the 2011 America Invents Act (AIA).
What is the controversial Fintiv rule? The rule allows for PTAB judges to reject reviewing a patent based on the progression of a parallel infringement case in a district court. In May 2020, the PTAB declared that its Fintiv decision would be made precedential, meaning future cases could depend on its criteria in cases similar to NHK Spring v. Intri-Plex, the case from which the rule appeared.
Ultimately, Senator Leahy’s bill would change the law in such a way that PTAB judges would be unable to use their discretion on factors not set out in the America Invents Act.