The US Court of Appeals for the Federal Circuit (CAFC) has ruled in favour of allowing Apple and other tech giants like Google to pursue a lawsuit to potentially overturn the controversial FinTiv rule.

The rule allows the USPTO’s Patent Trial and Appeal Board (PTAB) to refuse to consider a patent validity challenge if there is a parallel district court proceeding. Apple and other tech giants like Google say this was established without going through the formal rulemaking process.

Apple and the other claimants, which include Google and Cisco, are repeatedly sued for patent infringement and they often use the PTAB route through the inter partes review (IPR) to target the validity of the supposedly infringed patents. 

They assert that the FinTiv rule produces too many denials of institution requests to review the validity of patents through the PTAB. 

The US District Court for the Northern District of California had dismissed the action on the ground that the director’s instructions were made unreviewable by the IPR provisions of the patent statute.

In the precedential opinion from CAFC on Monday (13 March), however, the three judges affirmed in part and reversed in part the decision of the district court. ‘We affirm the unreviewability dismissal of plaintiffs’ challenges to the instructions as being contrary to statute and arbitrary and capricious,' the judges ruled. 'No constitutional challenges are presented.’ 

But they reversed the earlier Californian federal court decision to dismiss ‘the plaintiffs’ challenge to the instructions as having been improperly issued because they had to be, but were not, promulgated through notice-and-comment rulemaking’.

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Partner at Colorado-headquartered firm Holland & Hart Matthew Harvey said: "The  Federal Circuit decision means that at least Apple will have the opportunity to argue to the district court that the USPTO should have engaged in formal notice and comment rulemaking before adopting the Fintiv rule, which, if successful, would then give Apple and other interested parties the opportunity to weigh in as part of such a formal rulemaking procedure."

He continued: "Such rulemaking could result in IPRs becoming more likely to be instituted (likely the hope of Apple and other large technology companies). But there is a chance that any formal rulemaking shifts the rule in the other direction as other interested parties would also have the opportunity to comment; or that no substantive change happens at all."

Since decisions on whether to institute reviews cannot be appealed, the lawsuit cannot challenge the Fintiv rule itself, but will allow the lawsuit to proceed on the question of whether the patent office followed the proper procedure in setting the policy. 

It remands for further proceedings on the lone surviving challenge.

In 2020, the PTAB decided to make precedential its order in Apple v FinTiv, thus creating the Fintiv rule, which outlined six factors that the PTAB would consider to deny institution due to an earlier trial date in a parallel proceedings. 

Wilmer Cutler Pickering Hale and Dorr’s Catherine Carroll argued for the plaintiff side.  Former associate at Wilmer Hale, Weili J Shaw from the US Department of Justice, argued for the USPTO side.