The Ever Changing Landscape of Fintiv Based Discretionary Denials before the PTAB (RECORDING)
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The precedential decision in Apple Inc. v. Fintiv, Inc., Case IPR2020-00019, Paper 15 (May 13, 2020) addresses the PTAB’s discretion to deny institution of AIA proceedings based on parallel proceedings in other forums. Under Fintiv, the PTAB weighs factors, coined “Fintiv Factors” in its analysis whether to grant or deny institution of a trial before the PTAB. The use of Fintiv by the PTAB to deny institution has been praised by patent owners and cursed by patent challengers. This panel will delve into the PTAB’s use of Fintiv to thwart would be challengers from attacking patent claims in AIA proceedings. The panel will look at the changing landscape and evaluate the import of the various factors over time, consider whether Fintiv makes sense given the sliding trial schedules in some jurisdictions, consider how Fintiv impacts different technology areas, and consider how parallel proceedings in different jurisdictions have been impacted. Further the panel will consider where we are now and how changes to Patent Office leadership and proposed legislation might impact future proceedings.
This webinar is sponsored by Buchanan Ingersoll & Rooney
Emily Johnson
Head of IP Policy & Advocacy
Amgen, Inc.
Emily Johnson is the Head of IP Policy & Advocacy for Amgen, one of the world’s leading biotechnology companies. Emily is responsible for influencing the development of sound public policy with respect to IP protections that are important to Amgen’s long-term success. Emily collaborates cross-functionally with Amgen’s IP, litigation, regulatory, antitrust, commercial, and government affairs teams to develop IP policy positions. She also engages with external trade organizations and government agencies and identifies and develops amicus brief opportunities in cases that raise significant IP issues for Amgen. Prior to Emily’s policy role, she litigated U.S. and foreign patent disputes, proceedings before the USPTO’s Patent Trial and Appeal Board, and appeals to the Federal Circuit. Emily had the privilege of clerking for the Honorable Arthur Gajarsa (now retired) at the US Court of Appeals for the Federal Circuit. Emily chairs the Pharmaceutical & Biotechnology Issues Committee of Intellectual Property Owners Association and serves on the Board of the Federal Circuit Bar Association.
Jessica Marks
Senior Patent Counsel
Unified Patents
Jess Marks prepares and litigates post-grant proceedings before the PTAB for Unified Patents. Prior to joining Unified, Jess practiced at Finnegan, Henderson, Farabow, Garret & Dunner, LLP for over ten years. At Finnegan, Jess litigated post-grant proceedings, district court cases, and International Trade Commission proceedings. Jess is also experienced in licensing negotiations, patent prosecution, due diligence investigations, and opinions on patent infringement, patent validity, and freedom-to-operate. Jess’ cases included electrical, business method, and biological technologies ranging from video surveillance systems, Blu-ray disc players, image processing, artificial intelligence, medical devices, and pharmaceuticals. Jess earned her J.D. from the University of Maryland (now Francis King Carey) School of Law and her M.B.E. and B.A. in Biology from the University of Pennsylvania.
Todd Walters
Shareholder
Buchanan Ingersoll & Rooney PC
Todd Walters is the Chair of the firm’s Patent Office Litigation practice and Co-Chair of the Intellectual Property section. He is a current Vice-Chair of the Post-Grant Practice Committee of the Intellectual Property Owners Association (IPO), a past Chair of the Patent Trial and Appeal Board (PTAB) Trial Committee of the American Intellectual Property Law Association (AIPLA) and a past Chair of the USPTO Post Grant and Inter Partes Practice Committee of the American Bar Association-Intellectual Property Law (ABA-IPL) section. Todd was named the Best Lawyers ® 2020 Patent Law “Lawyer of the Year” in Washington, D.C.