Knobbe Martens partner Kerry Taylor, Ph.D. was quoted by Law360 in the article “Vidal’s New Guidance May Make Fintiv Denials Even Rarer”. The article discusses new guidance unveiled by U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal, on when the Patent Trial and Appeal Board (the “Board”) may deny review of patents based on parallel litigation.
Speaking on the significance of the director’s memo, Taylor discusses the likelihood of more petitioners filing so-called Sotera stipulations in light of Director Vidal’s memo. “Of the circumstances that have a higher degree of certainty in this memo, the one that falls squarely under the petitioner’s control is the Sotera-type stipulation.” He added that the guidance ends ambiguity about how influential such stipulations will be at the Board.
Taylor also commented on the aspect of the memo which states that the board will not deny petitions based on Fintiv if there is “compelling evidence of unpatentability.” Taylor does not feel this guidance will be particularly helpful to practitioners, saying, “How do I know it’s a ‘compelling’ case versus a vanilla case?” He added that all petitioners believe in the compelling nature of their case, so “that’s not really one that provides objectively clarifying guidance to the parties.”
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Separately, Taylor was also quoted on the same topic by Bloomberg Law in the article “’Fintiv’ Patent Review Denial Guidance Issued by USPTO Chief”. The article discusses Director Vidal’s guidance, as well as a bill recently introduced in the Senate, the “PTAB Reform Act,” which would prevent the Board from declining to review a challenge based on ongoing litigation.
Speaking on the impact the bill could have on the USPTO Fintiv guidance, Taylor is quoted saying, “If that [PTAB Reform Act] legislation were to go through, it would moot the Fintiv discretionary denial, then this interim guidance wouldn’t be important anymore.”
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