Patent Owner Tells PTAB Precedential Opinion Panel Fintiv Factor 2 Should Be Modified Post-Arthrex

Fintiv was decided when ALJs had the apparent authority to ‘render a final decision on behalf of the United States without any such review by their nominal superior or any other principal officer in the Executive Branch.’” – K.Mizra motion to POP


On October 8, a request was made on behalf of K.Mizra LLC asking the Patent Trial and Appeal Board’s (PTAB’s) Precedential Opinion Panel (POP) to review a PTAB institution decision on the ground that Apple Inc. v. Fintiv (IPR2020-00019) Factor 2 should be modified. Instead of comparing the proximity of the district court’s trial date to the projected time to a PTAB final written decision (FWD), the timing should account for completion of Director Review based on the Supreme Court’s ruling in Arthrex v. Smith & Nephew, said the motion. The issue has not been previously raised before the POP to IPWatchdog’s knowledge.

The Arthrex decision mandated that PTAB final written decisions (FWDs) must be appealable to the U.S. Patent and Trademark Office (USPTO) Director. In July of this year, the USPTO implemented an interim rule in response to Arthrex that allows for parties to request Director review of PTAB decisions during the interim phase of the rulemaking process.

Timely requests for Director Review must be filed within 30 days of a FWD, pursuant to agency regulations governing motion decisions codified at 37 CFR § 42.71(d). Requests for Director rehearing that are timely filed will reset the timing requirements for appeals of PTAB decisions or civil actions against the agency under 35 U.S.C. §§ 145 and 146 pursuant to agency regulations governing timing for appeals and civil actions codified at 37 CFR § 903(b).

Under Fintiv Factor 2, the “proximity of the court’s trial date” must be compared “to the Board’s projected statutory deadline for a final written decision.” But “Fintiv was decided when ALJs had the apparent authority to ‘render a final decision on behalf of the United States without any such review by their nominal superior or any other principal officer in the Executive Branch,” argues the motion. Thus, in light of the Arthrex decision, the Fintiv analysis should “compare the proximity of the court’s trial date to the Director’s projected deadline for final review.”

The motion relates to a petition for inter partes review (IPR) brought by Cisco Systems against K.Mizra in March 2021 requesting cancellation of certain claims of K.Mizra’s U.S. Patent No. 8,234,705 as obvious. In their September 24 institution decision, the PTAB panel said there is a reasonable likelihood that Cisco will prevail in proving the claims unpatentable and declined to exercise discretion under 35 U.S.C. § 314(a) to deny institution.

In its analysis of Factor 2 of the Fintiv analysis, the PTAB explained that the current Scheduling Order for the co-pending district court litigation proposes a trial date of June 6, 2022, about three months before the Board’s statutory deadline for a final written decision. The PTAB found this timing to be “reasonably close” and said the factor weighed slightly in favor of denial. However, the factors on the whole weighed in favor of institution.

In a footnote, the PTAB addressed K.Mizra’s argument that the Fintiv Factor 2 analysis should be based on the timing for a Director Review decision, and reasoned that the factor in its current form only applies to a final written decision and “not the time required to complete any subsequent rehearing requested by a party.”

Ultimately, concludes the request to the POP:

This issue presents a question of wide applicability and undermines the certainty and consistency of the Board’s application of discretion under 35 U.S.C. § 314(a) to deny institution. Accordingly, this issue warrants the attention of the Precedential Opinion Panel.

Michael Kim of Folio Law Group filed the request on behalf of K.Mizra.


Eileen McDermott

Eileen McDermott

is the Editor-in-Chief of Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

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