PTAB Issues Guidance on Discretionary Denials

In a recent newsflash, we discussed the USPTO’s withdrawal of its 2022 memorandum that detailed how the PTAB would exercise its discretion to deny petitions for inter partes review and post-grant review. New guidance from the USPTO, issued on March 24, 2025, provides additional details on how the PTAB will weigh discretionary denials going forward.

Key Takeaways

• The PTAB will return to applying the Fintiv factors in a holistic, flexible approach.
• The 2022 memo’s rules concerning ITC proceedings, stipulations and “compelling evidence” of unpatentability will not be treated as bright lines, but as factors to consider.
• If an institution decision has already been made, a pending request for rehearing or for Director review will allow for reconsideration of the discretionary analysis under the new guidance.

Details

The USPTO announced on February 28, 2025, that it was rescinding a 2022 memorandum on discretionary denials of post-grant proceedings by the Patent Trial and Appeal Board. As we have previously covered, the 2022 memorandum narrowed the use of discretionary denials based on parallel district court litigation, specifying bright line instances where discretionary denials would not be issued.  Rescinding the 2022 memorandum seemed to signal an intent to return to a more flexible approach to the discretionary denial analysis.

The most recent guidance from the USPTO, issued March 24, 2025, confirms this more flexible direction.  On March 24, 2025, Chief Administrative Patent Judge Scott Boalick issued a memorandum providing guidance on the application of discretionary denials. 

First, the memo explains that the recission of the 2022 memorandum applies to cases where (i) no institution decision has issued, (ii) a request for rehearing is pending, or (iii) a request for Director Review is pending. Additional briefing on the application or non-application of the rescission will be considered on a case-by-case basis. Further, only in “extraordinary circumstances” will the PTAB revisit earlier decisions if the time for requesting rehearing or Director review has passed.

Second, going forward, parallel ITC proceedings will be analyzed under the Fintiv factors.  Under the 2022 memo, discretionary denials were not available based on parallel ITC proceedings. The reasoning was that ITC rulings do not bind either the USPTO or a district court, and so cannot conclusively resolve patent invalidity issues. Chief Judge Boalick, however, states that it is still difficult to assert patents that the ITC has found invalid, so it is still appropriate to consider those proceedings. Thus, if the ITC is projected to reach a final determination before the PTAB’s deadline to issue a final written decision, the board is more likely to deny institution.

Third, under the 2022 memo, the PTAB would not deny institution where a petitioner submitted a Sotera stipulation, agreeing not to pursue invalidity in district court on “the same grounds” or “any grounds that could have reasonably been raised” in the IPR or PGR petition.  Under the March 24, 2025 guidance memo, Sotera stipulations will be “highly relevant” to a holistic analysis, but not dispositive.     

Fourth, in applying the Fintiv factors, the board will consider “any evidence that the parties make of record” concerning the proximity of the district court’s trial date, including median time-to-trial statistics.  Given that a court’s trial schedule and median time-to-trial statistics were considered under the 2022 memo, this does not appear to be a significant change. 

Finally, under the 2022 memo, presenting “compelling merits” of invalidity meant that the PTAB would not deny institution based on a parallel proceeding. Going forward, presenting “compelling merits” will be “part of a balanced assessment of all the relevant circumstances in the case.”

In brief, the new guidance makes it clear that the PTAB will be returning to a more holistic approach to applying the Fintiv factors. As such, the prevalence of discretionary denials may see a return to the levels immediately preceding the issuance of the 2022 memo.