Law360 Quotes Rubén Muñoz on Fintiv Test in Patent Reviews

For its article “Vidal Puts Fintiv Back In The Spotlight With New Ruling,” Law360 quoted Akin intellectual property partner and Philadelphia partner in charge Rubén Muñoz. The article looks at a recent decision by U.S. Patent and Trademark Office Director Kathi Vidal in which she said that the Fintiv test, via which the Patent Trial and Appeal Board (PTAB) can discretionarily not review a patent if a related district course case is at an advanced stage, requires multifactor analysis that cannot be avoided if the challenger presents compelling evidence of the patent’s invalidity.

Rubén said that the biggest change to come from this decision in the short term is that PTAB judges will now need to address the Fintiv factors more thoroughly than some have recently done. He added, “The big message for me there is that you cannot short-circuit the discretionary analysis by just jumping to the merits of the petition. The judges have to go through the Fintiv framework first.”