On Friday, February 28, 2025, the United States Patent and Trademark Office (USPTO) announced the withdrawal of the June 2022 memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” which had been issued by former USPTO Director Kathi Vidal.
The 2022 Memorandum was intended to clarify the Patent Trial and Appeal Board’s (“PTAB”) application of the 2020 decision in Apple Inc. v. Fintiv (“Fintiv”). The rescinded memorandum outlined three scenarios in which the PTAB would not deny institution of an inter partes review (“IPR”) petition based on Fintiv:
- The PTAB will not deny institution when a request for denial under Fintiv is based on a parallel International Trade Commission (ITC) proceeding.
- The PTAB will not deny institution under Fintiv if the petitioner stipulates not to pursue the same grounds in a parallel district court proceeding or any grounds that could have reasonably been raised in the petition (known as a Soltera stipulation).
- The PTAB will not deny institution under Fintiv if a petition presents compelling evidence of unpatentability.
With the rescission of this guidance, the PTAB’s approach to discretionary denials is likely to change in several ways:
- The PTAB will now consider whether a petition related to an ongoing ITC proceeding is subject to discretionary denial.
- The PTAB will no longer consider Soltera stipulations as definitive in determining whether to exercise discretion to deny institution.
- The Board will evaluate the petition based on the Fintiv factors rather than the “compelling merits” analysis outlined in the 2022 Memorandum.
Going forward, practitioners and patent owners are instructed to refer to the PTAB’s precedential decisions for guidance, including Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). Additionally, practitioners should also be aware that any portion of a PTAB or Director Review decision relying on the 2022 Memorandum will not be considered binding on the PTAB.
