USPTO Revises Procedure for Discretionary Denials in AIA Post-Grant Proceedings
Post-grant proceedings, including inter partes review (IPR) and post-grant review (PGR), are administrative trials conducted by the Patent Trial and Appeal Board (PTAB) to reconsider the validity of an issued patent. These proceedings allow third parties to challenge patents based on prior art or other legal grounds. The PTAB has discretionary authority to deny institution of these proceedings, even when a petitioner meets the threshold requirements for review. Discretionary denial often considers factors such as parallel district court litigation, procedural efficiency, and fairness to the parties involved. A key framework guiding discretionary denials has been the Fintiv factors, which assess whether ongoing litigation might make an IPR or PGR redundant or inefficient.
Author: Kenny Knox
On March 24, 2025, the U.S. Patent and Trademark Office (USPTO) issued a memorandum providing guidance on its recent decision to rescind the "Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation." This change reverts policy to pre-2022 guidance, specifically the precedential decisions in Apple Inc. v. Fintiv, Inc. and Sotera Wireless, Inc. v. Masimo Corp.
The rescinded Interim Procedure was initially implemented on June 21, 2022, to guide the PTAB while the USPTO explored potential rulemaking on the discretionary denial of inter partes review and post-grant review proceedings when parallel litigation existed. However, no final rule was proposed, leading to the decision to revert to prior guidance.
The USPTO memorandum clarifies several points regarding the rescission. The rescission applies to cases where an institution decision has not yet been issued or where a request for rehearing or Director Review remains pending. The Board will consider requests for additional briefing on the impact of this rescission on a case-by-case basis. Once the deadline for seeking Director Review or rehearing has passed, absent extraordinary circumstances, decisions on institution will not be revisited.
The PTAB will apply the Fintiv factors when evaluating cases involving parallel proceedings before the International Trade Commission (ITC). If the ITC's projected final determination date precedes the Board’s final decision deadline, institution is less likely to be granted. Conversely, if the ITC’s determination is expected after the Board's decision deadline, the likelihood of institution increases.
A timely-filed Sotera stipulation—where a petitioner agrees not to pursue in district court or ITC any ground raised or that could have been raised in the IPR/PGR—is highly relevant. However, such stipulations are not automatically dispositive; they will be considered as part of a holistic Fintiv analysis.
The Board will evaluate all evidence presented regarding the proximity of trial or ITC determination dates, including median time-to-trial statistics for the relevant district court. The Fintiv framework remains a holistic and balanced assessment. While strong merits of a case are a factor, they are not solely determinative of whether an institution will be granted.
By rescinding the Interim Procedure, the USPTO has reaffirmed the role of Fintiv and Sotera in guiding PTAB's discretionary decisions. Stakeholders in patent disputes should carefully assess the timing of parallel litigation and consider how PTAB's discretionary analysis might impact their post-grant proceedings strategy. This policy shift underscores the importance of a case-by-case approach, making it crucial for petitioners and patent owners to strategically navigate IPR and PGR proceedings in the context of ongoing litigation. As a result, the number of IPR and PGR petitions filed may decrease, as petitioners may face a higher likelihood of discretionary denials under the reinstated Fintiv framework.
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