USPTO Rescinds Memo Addressing PTAB Discretionary Denial Procedures

On Friday, the USPTO rescinded its June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Fintiv memo”). The USPTO notice makes clear that any prior PTAB or Director Review decisions that rely on the memorandum are no longer binding or persuasive on the PTAB.

The now-rescinded Fintiv memo included instructions in four main areas, which are no longer in effect:

• Sotera Stipulations: “[T]he PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”
• Trial Date: “[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors,” and panels may consider other factors such as median time to trial in the district.
• Compelling Merits: “Where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.”
• ITC and Fintiv: “The PTAB will not discretionarily deny petitions based on applying Fintiv to a parallel ITC proceeding.”

Rather than follow the Fintiv memo’s prescriptive guidance, panels will now weigh the Fintiv factors as they had done prior to the memo’s issuance, in view of the Board’s earlier precedent including the 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) decisions.

Read Sterne Kessler’s 2024 PTAB Year in Review: Analysis & Trends report for insights and an in-depth exploration of the last year of PTAB practice.