Posts Tagged: "Fintiv"

Fintiv, Inc. has filed a complaint against Apple, Inc. in the U.S. District Court for the Northern District of Georgia, Atlanta Division, alleging “corporate theft and racketeering of monumental proportions” due to Apple’s misappropriation of Fintiv’s mobile wallet technology. Fintiv’s complaint charges that Apple blatantly stole its trade secrets for mobile wallet technology from Fintiv’s predecessor, CorFire, under pressure to develop a mobile digital wallet and an inability to do so on its own.

I invited McNish to join us for a conversation about PTAB practice and how it has evolved over the last several months, and to specifically discuss one of the more intriguing criteria being used by the USPTO to discretionarily deny institution of IPR challenges—the settled expectations of the patent owner. And, according to McNish, “by all appearances, ‘settled expectations’ decisions are converging toward a bright-line rule warranting discretionary denial starting six years after issuance, which would track the Acting Director’s previous analogy to the six-year damages lookback in the Dabico decision.”

Last Friday, U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart issued a pair of orders on Director review of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) petitioned by mobile network provider Motorola Solutions to challenge digital video recording patent claims owned by Stellar LLC. While Stewart’s rulings confirm there is no retroactive application of the USPTO’s recent rescission of previous guidance on PTAB discretionary denials, they also underscore that IPRs instituted prior to the guidance’s rescission this February will be subject to Acting Director Stewart’s discretionary denial framework if Director Review requests on those institution decisions are still pending.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, May 16, reversed a district court’s decision granting summary judgment of non-infringement for Apple. The CAFC found that, under the district court’s broad construction of the term “widget,” Fintiv, Inc. had presented enough evidence to “create a genuine issue of material fact that a widget exists in the accused products,” and therefore potentially infringed.

The first four decisions on discretionary denial of institution under the U.S. Patent and Trademark Office’s (USPTO’s) recently-implemented interim process for Patent Trial and Appeal Board workload management were issued Friday afternoon, May 16. The Office announced in late March that Acting USPTO Director Coke Morgan Stewart would be taking over requests for discretionary denial of inter partes review (IPR) or post grant review (PGR) proceedings under a new bifurcated process. That announcement came one month after Stewart rescinded former USPTO Director Kathi Vidal’s “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.”

The Patent Trial and Appeal Board (PTAB), on Wednesday, May 7, designated a recent Director Review decision issued by Acting Director of the U.S. Patent and Trademark Office (USPTO), Coke Morgan Stewart, as informative. The decision clarified that a district court’s final judgment of invalidity favors denial of inter partes review (IPR) under the Fintiv framework.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision Wednesday affirming a district court’s finding for PayPal Holdings, Inc. that certain claims of Fintiv, Inc.’s patents for a mobile wallet payment system were invalid as indefinite. Fintiv sued PayPal for infringement of its U.S. Patent Nos. 9,892,386; 11,120,413; 9,208,488; and 10,438,196. Following claim construction, the district court found that the “payment handler terms” in the claims were indefinite, and specifically that the asserted claims were “means-plus-function” terms that failed to disclose adequate corresponding structure.

The Patent Trial and Appeal Board (PTAB) has undergone significant procedural shifts over the past few years, particularly with respect to discretionary denial of institution of trial proceedings under 35 U.S.C. § 314(a). One significant ground under which discretionary denial is exercised is provided by the controversial six-factor test first articulated in Apple Inc. v. Fintiv, Inc., IPR2020-00019, which allows the PTAB to deny institution of an inter partes review (IPR) petition when parallel district court litigation is pending.

Inventor Carolyn Hafeman—who is appealing Patent Trial and Appeal Board (PTAB) decisions invalidating her device location and theft prevention patent claims in favor of Google, LG and Microsoft—sent a letter Tuesday to the U.S. Court of Appeals for the Federal Circuit (CAFC) highlighting that the U.S. Patent and Trademark Office’s (USPTO’s) decision to rescind its memo on interim procedures for discretionary denial should call into question the underlying decisions in her case.

The U.S. Supreme Court today denied certiorari in Intel v. Vidal, a case that asked the Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) ruling concerning the Patent Trial and Appeal Board’s (PTAB’s) so-called Fintiv framework. The CAFC’s March 2023 decision said appellate review of whether the PTAB’s discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” was precluded by Section 314(d) of the patent statute.

The U.S. Patent and Trademark Office (USPTO) responded last week to a petition for certiorari that is asking the Supreme Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that said appellate review of whether the Patent Trial and Appeal Board’s (PTAB’s) discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” is precluded by Section 314(d) of the patent statute.

Between the precedential Fintiv decision in March of 2020 and Director Vidal’s Guidance Memo regarding the application of Fintiv in June of 2022, the discretionary denial rates of inter partes review (IPR) institution decisions under 35 U.S.C. § 314(a) plummeted from 40-50% to 11-16%. Coupled with the order issued by the Chief Judge of the Western District of Texas in July of 2022 declaring that all new patent cases filed in the Waco Division will be randomly assigned among the 12 judges in the district, the substantial decline in denials based on Fintiv in 2022 was not surprising. Now, amid speculations that Fintiv denial rates will increase once again, the USPTO recently announced a set of proposed rules on discretionary denial practice in an Advance Notice of Proposed Rulemaking (ANPRM).

On March 30, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued a decision on sua sponte Director review that vacated a decision of the Patent Trial and Appeal Board (PTAB), which had previously denied institution of inter partes review (IPR) proceedings brought by semiconductor company Wolfspeed. In her latest in a series of sua sponte decisions, Director Vidal ruled that the PTAB erred in determining that prior art asserted by Wolfspeed was essentially the same as other prior art asserted against the same Purdue University patent claims in previous IPR proceedings that were also denied institution by the PTAB.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday said that Apple has standing to pursue its claim that the U.S. Patent and Trademark Office (USPTO) Director’s instructions to the Patent Trial and Appeal Board (PTAB) regarding discretionary denial practice under Apple Inc. v. Fintiv, Inc. were made without proper notice-and-comment rulemaking. The CAFC affirmed the district court’s ruling on two other challenges brought by Apple, Cisco, Intel and Edwards Lifesciences, but said that at least Apple had standing to present the challenge that the discretionary denial instructions were improperly issued and reversed on that ground. The appeal relates to Apple’s and the other companies’ challenge of the Fintiv instructions governing the PTAB’s discretion to deny institution of inter partes review (IPR) proceedings based on their contention that they will result in too many denials.