The Ever Changing Landscape of Fintiv Based Discretionary Denials before the PTAB (RECORDING)
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
Head of IP Policy & Advocacy
Emily Johnson is Senior Counsel, IP Litigation at Amgen, one of the world’s most innovative biotechnology companies. Emily oversees Amgen’s U.S. and foreign patent litigations and post-grant proceedings before the Patent Trial and Appeal Board and she provides counsel regarding Amgen’s intellectual property strategies. Before joining Amgen, she represented clients in private practice, litigating nearly 100 intellectual property disputes in both judicial and administrative tribunals. Emily had the privilege of clerking for the Honorable Arthur Gajarsa at the Federal Circuit. Emily co-chairs the PTAB Committee of the Federal Circuit Bar Association and chairs the U.S. Post-Grant Patent Office Practice Committee of Intellectual Property Owners Association.
Senior Patent Counsel
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.
Patent Office Litigation Group Chair & 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.