A recently released study from Unified Patents has put numbers to the sense many patent attorneys already had—the Patent Trial and Appeal Board is spending a lot of time on Fintiv discretionary denial analysis. And I’ll follow up on that in a future post.
But there’s one other thing that jumps out of the study’s data.
When the PTAB decides not to institute a decision on the merits, it spends an average of 25 pages on the decision. In only 4% of these denials did the Board analyze Fintiv—typically to spend only a page to say that the PTAB doesn’t need to perform a Fintiv analysis because the petition does not present a reasonable likelihood of invalidity.
So we know the PTAB is doing its merits analysis first—just as you’d expect, given that the merits are the most important inquiry.
But if we look at procedural denials, the Board spends 20 pages on the decision. And of those 20 pages, they devote 11 to Fintiv analysis—meaning that they’re spending about one-third as many pages on the merits in procedural denials (9) as they are in denials on the merits (24-25). But we already know that the Board has to be looking at the merits first, and only then reaching Fintiv, because merits denials explicitly say that reaching Fintiv is unnecessary if the merits don’t support institution. Beyond that, one of the Fintiv factors instructs the Board to examine the merits of the petition, another reason to expect them to perform merits analysis prior to Fintiv analysis.
The expectation is that, in cases where the Board denies institution under Fintiv, the Board would present their merits discussion at equal length to that found in a merits-based decision on institution. Only then would they find that, under Fintiv, the balance of factors means that a petition must be denied anyway, even if it appears to be a meritorious petition. But instead, the Board appears to be giving short shrift to the merits in Fintiv denial cases, relying on Fintiv for the denial.
There’s really only one conclusion to draw from this. When the Board denies institution based on Fintiv, they likely do so only when the merits are strong enough to render the patent likely invalid. Otherwise, they would have denied the petition on the merits.
IPR was created to “screen out bad patents while bolstering valid ones.” But Fintiv is being used to leave invalid patents in force—the exact opposite.
It’s time to get rid of Fintiv.