Fintiv Fails: PTAB Uses 'Remarkably Inaccurate' Trial Dates
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`By Dani Kass
`Law360 (November 2, 2021, 9:09 PM EDT) -- The Patent Trial and Appeal Board has controversially been relying on district court trial dates to figure out
`whether it would be duplicative to hear a patent challenge, but Perkins Coie LLP attorneys have found that the board relies on trial dates that almost always
`get pushed back.
`
`Between May and October 2020, the PTAB rejected 55 petitions based on the speed of co-pending
`patent litigation. However, four of those were in instances where the trial already took place, and only
`three others had trials that took place on time, Andrew Dufresne, Nathan Kelley and Lori Gordon
`wrote in a blog post Friday.
`
`"The trial date factor is pretty central to the Fintiv analysis, and we had seen anecdotal reports from
`others suggesting the trial dates the board was using tended to shift, so we were interested in
`tracking that in a more systematic way to see what the data really showed us," Dufresne told Law360
`on Tuesday.
`
` is the precedential and oft-challenged PTAB ruling that lays out some of the discretionary
`Fintiv
`factors administrative patent judges can weigh when deciding whether to reject an otherwise
`meritorious patent challenge. Under Fintiv, judges consider whether the district court trial is likely to
`be completed before the final written decision is legally due, and how far the parallel litigation has
`proceeded, among other factors.
`
`While Fintiv denials have been decreasing in recent months, they've remained one of the hottest
`topics in patent law, and the research published Friday seems to lend support to those who think
`Fintiv denials should be reined in.
`
`In their post on the firm's 1600 PTAB & Beyond blog, the attorneys said they purposely picked a six-
`month period that would allow them to see where trials stood a year out, which is when the board's
`final written decisions would have been due.
`How Far Off Is The PTAB On Trial Dates?
`The PTAB relies on trial dates to decide whether to hear patent challenges, but those dates
`are almost always pushed back.
`
`How Often Does The PTAB
`Get It Right?
`Perkins Coie attorneys found that the vast
`majority of cases where Patent Trial and Appeal
`Board petitions were turned away based on
`related trial dates had the trials extended by
`several months.
`5.9% (3 cases)
`
`94.1% (48 cases)
`
`Correct
`
`Incorrect
`
`Source: Perkins Coie
`
`Source: Perkins Coie
`
`In all, the attorneys found that three trials were conducted on the expected timeline, one was delayed by less than a month and five were delayed between
`one and three months. Another 17 were delayed by three to six months, while three were delayed from six months to a year, and seven more are still
`pending a year later. The remaining 15 were terminated with a decision from the district court about whether the patents were valid.
`
`"The board's reliance on scheduled trial dates has proven remarkably inaccurate, and our results contradict the board's stated practice under Fintiv of simply
`accepting nominal trial dates at face value," the post states. "Trial dates in patent litigation are not stable and make a very poor barometer for evaluating the
`potential efficiency of denying institution based on a parallel proceeding."
`
`--Graphics by Ben Jay. Editing by Marygrace Murphy.
`
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