On March 24, 2025, Chief Administrative Patent Judge Scott R. Boalick issued a memo directed to the members of the Patent Trial and Appeal Board (PTAB) explaining why the USPTO’s June 2022 Fintiv memo was rescinded and how the PTAB should analyze Fintiv moving forward. The memo explains that:
- Rescission of the June 2022 Fintiv memo applies to any case pending institution or pending rehearing/director review of an institution decision;
- The Fintiv analysis will once again be applied when the parallel proceeding is an ITC investigation, and the relevant date is the projected date for the full Commission’s final determination;
- Sotera stipulations are “highly relevant” but no longer dispositive;
- Under Fintiv factor two (proximity to trial date), the Board will still consider median time-to-trial statistics (in addition to the trial date, if scheduled); and
- The strength of the merits arguments are a factor, but compelling merits are no longer dispositive.
Sterne Kessler’s PTAB Practice will continue to follow developments and provide analysis as they occur.
