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In February 2025, the United States Patent and Trademark Office (USPTO) rescinded its June 2022 Interim Procedure governing Patent Trial and Appeal Board (PTAB) discretionary denials under Fintiv, which had imposed structured guidance on how the PTAB should weigh parallel district court litigation when deciding whether to institute inter partes reviews (IPRs) and post-grant reviews (PGRs). Within a month of rescinding the Fintiv memo, the PTAB issued a clarifying guidance memo instructing members of the PTAB on how to analyze Fintiv going forward. Together, these actions signaled a return to case-by-case, holistic discretionary analysis, rooted in precedential PTAB decisions rather than following the 2022 memo’s narrower rules.

The rescission eliminated prescriptive rules related to Sotera stipulations, compelling merits, and parallel U.S. International Trade Commission (ITC) proceedings, but indicated that median time-to-trial statistics should still be considered. The PTAB memo confirms that Fintiv remains good law but must be applied flexibly, with all relevant factors weighed based on the record in each case.

Key Takeaways

  • No More Bright-Line Rules: The PTAB now applies the multifactor Fintiv discretionary denial analysis rather than the bright-line directives of the rescinded 2022 memo.
  • Greater Uncertainty: Without prescriptive guidance, unpredictability in discretionary denials has increased.
  • Sotera and Timing — Still Relevant but Less Predictive: Stipulations not to pursue overlapping grounds are helpful but no longer guarantee avoidance of discretionary denial; timing and projected litigation outcomes matter.
  • Merits Strength Matters, but “Compelling Merits” Is Not Determinative: Strong invalidity arguments are one factor among many.

Best Practices for Practitioners and Parties

  • As petitioner:
    • File Early and Strategically: Early petitions reduce the weight of Fintiv timing considerations and minimize risks associated with parallel litigation.
    • Strategically Tailor Stipulations: Draft them carefully considering litigation strategy as a whole, but pair them with strong explanations of efficiency and fairness in the discretionary briefing.
  • As patent owner:
    • Include Fintiv Arguments: Be sure to include Fintiv arguments anytime there is a parallel litigation; chances of success of denial under Fintiv are higher with the rescission of the 2022 memo.
    • Consider Fintiv in Deciding Assertion Forum: Consider filing in a traditionally faster forum or the ITC to argue for discretionary denial under Fintiv.
  • Both parties:
    • Develop a Complete Fintiv Narrative: Address all factors cohesively rather than relying on a single argument (e.g., stipulations or merits).
    • Substantiate Timing Arguments: Use objective data such as court statistics, not merely docketed trial dates.

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This article appeared in the 2025 PTAB Year in Review: Analysis & Trends report.

© 2026 Sterne, Kessler, Goldstein & Fox PLLC

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