Patent Advocates Push Back: IP Groups Urge Fed. Circuit To Dismiss Fintiv Memo Appeal

Recently, a group of patent owner organizations and innovation advocates — including the US Inventor, Alliance of U.S. Startups and Inventors for Jobs (USIJ), and others — submitted amicus briefs urging the Federal Circuit to uphold the USPTO’s authority. They argue that the Fintiv framework provides essential discretion for protecting small inventors and patent owners from what they call “harassing and duplicative challenges.”

Concerns Over Forum Shopping and Patent Validity Reviews

The underlying case stems from tech company arguments that the Fintiv guidelines lead to inconsistent outcomes and disincentivize the use of IPRs as intended under the America Invents Act (AIA). They claim the policy favors patent owners in a way that undermines the public interest in eliminating invalid patents.

However, the IP organizations backing the USPTO say that the discretion to deny review helps balance the playing field. In their brief, they point out that “PTAB proceedings are increasingly used by deep-pocketed litigants to attack the validity of patents that are simultaneously being litigated in court,” often putting small patent holders at a disadvantage.

Judicial Authority at the Heart of the Debate

At the core of the appeal is the question of whether the USPTO had the legal authority to issue and implement the Fintiv Memo. Petitioners are asking the Federal Circuit to scrutinize the agency’s discretionary denial practice and potentially overturn the policy.

The amicus filers counter that such discretion is not only permissible under existing statutory frameworks but also vital to the USPTO’s mission. They argue that the memo is a lawful expression of the agency’s rulemaking powers, designed to ensure efficiency, reduce litigation burdens, and respect the parallel court process.