The US Patent and Trademark Office (USPTO) issued new guidance explaining the reinstatement of a patent-owner friendly precedent that eases administrative judges’ ability to reject validity challenges for patents in parallel infringement suits. In a memo released Monday, Chief Administrative Patent Judge Scott Boalick said the Patent Trial and Appeal Board (PTAB) will apply Apple v. Fintiv from 2020 when reviewing patent validity simultaneously asserted in district court or at the US International Trade Commission (USITC).
The new guidance, which comes after the USPTO axed a 2022 memo issued by Biden-era USPTO Director Kathi Vidal, allows judges to defer to proceedings with approaching trial dates in district court, or when the USITC is expected to resolve a case ahead of the PTAB. Kit Crumbley, a partner at Bracewell and a former PTAB Judge, told Bloomberg Law that considering the trial date alone may have been a “flaw” in the system after Fintiv was originally decided but before Vidal put restrictions around it.
“We’re still going to have to see how this plays out, but some guidance is better than no guidance for sure,” Crumbley said.
