Nov. 29, 2021

USIJ White Paper on Fintiv Doctrine

The Patent and Trial Board (“PTAB”) has come under political pressure for its use of the “Fintiv” doctrine.  The Fintiv doctrine, named for the case Apple v. Fintiv, IPR2020-00019, recognizes that the PTAB has discretion on whether to institute proceedings to challenge the validity of a patent, and that the PTAB may exercise that discretion to deny instituting such proceedings when its work would be duplicative of work already being done by another judicial body, such as a district court or the International Trade Commission (ITC).  The Fintiv doctrine arises from the collision course inherent when two different governmental bodies are tasked with rendering decisions on the same issue at more or less the same time.  The PTAB, which has now been in operation for about eight years, has developed its own jurisdictional guidelines on when it will decline to take action that will disrupt the work of another tribunal.  This prudence is to be commended.