Recent Updates at the U.S. Patent Trial and Appeal Board

Recent changes at the U.S. Patent Trial and Appeal Board (PTAB) have brought uncertainty to inter partes review and post-grant review practitioners before the U.S. Patent and Trademark Office (PTO). These procedural and substantive changes appear to lower the bar for discretionary denials. Patent challengers and patent owners alike should therefore be aware of the changes at the PTO, which describe, among other things, how parallel proceedings before U.S. district courts or the International Trade Commission affect PTAB proceedings.

2025: Uncertain Times at the PTAB

The start of 2025 brought with it a series of changes at the PTAB. These changes have created uncertainty as to how the PTAB will apply its discretion when determining whether or not to institute inter partes reviews (IPRs) and post-grant reviews (PGRs).

Fintiv Memo Rescinded

First, on February 28, 2025, the U.S. Patent and Trademark Office (USPTO) issued a notice rescinding its June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Fintiv memo”). The notice stated that any prior PTAB or Director Review decisions that rely on the Fintiv memo are no longer binding or persuasive on the PTAB.

The now-rescinded Fintiv memo included instructions in the four main areas below, which are no longer in effect: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

Guidance for the New Fintiv World

Next, on March 24, 2025, Chief Administrative Patent Judge Scott R. Boalick issued a memo directed to the members of the PTAB explaining why the Fintiv memo was rescinded and how the PTAB should analyze Fintiv moving forward. The memo explains that:

• Rescission of the Fintiv memo applies to any case pending institution or pending rehearing/director review of an institution decision;
• The Fintiv analysis will once again be applied when the parallel proceeding is an ITC investigation, and the relevant date is the projected date for the full Commission’s final determination;
• Sotera stipulations are “highly relevant” but no longer dispositive;
• Under Fintiv factor two (proximity to trial date), the Board will still consider median time-to-trial statistics (in addition to the trial date, if scheduled); and
• The strength of the merits arguments are a factor, but “compelling merits” are no longer dispositive.

Significant Change to Pre-Institution Briefing Procedures

Shortly after Judge Boalick’s memo, the USPTO issued a memo titled “Interim Processes for PTAB Workload Management” on March 26, 2025, which significantly alters the pre-institution briefing procedure for IPRs and PGRs. This latest memo bifurcates pre-institution briefing by creating new, separate briefing on discretionary considerations.

Under the Interim Process, decisions to institute trial will now be bifurcated between (i) discretionary considerations, and (ii) merits and non-discretionary statutory considerations. The Director, in consultation with at least three PTAB judges, will determine whether discretionary denial is appropriate. If the Director determines discretionary denial is not appropriate, the petition will be assigned to a three-judge panel for a decision on the merits and any other non-discretionary statutory considerations. The memo does not indicate whether the PTAB judges involved in discretionary determinations will be the same as those who review the merits.

Under the Interim Process, the parties may file briefing pertaining to discretionary considerations separate from briefing on the merits. Key points of the new briefing process include:

• Within two (2) months of issuance of the Notice of Filing Date Accorded to a petition, a patent owner may file a brief (14,000 word limit) arguing for discretionary denial of institution.
• In addition to the considerations enumerated in existing precedent, such as Fintiv, General Plastic, and Advanced Bionics, the memo identifies additional discretionary considerations that may be addressed, including:
  • Whether the PTAB or another forum has already adjudicated the validity or patentability of the challenged patent claims;
  • Whether there have been changes in the law or new judicial precedent issued since issuance of the claims that may affect patentability;
  • The strength of the unpatentability challenge;
  • The extent of the petition’s reliance on expert testimony;
  • Settled expectations of the parties, such as the length of time the claims have been in force;
  • Compelling economic, public health, or national security interests; and
  • Any other considerations bearing on the Director’s discretion.
• The memo separately highlights that the Director will also consider the PTAB’s ability to comply with pendency goals for ex parte appeals, its statutory deadlines for AIA proceedings, and other workload needs.
• A petitioner may file an opposition brief (14,000 word limit) no later than one (1) month after the patent owner’s brief.
• Any reply brief (if granted under the good cause standard) will be limited to 5,600 words.
• The patent owner preliminary response will still be due three (3) months after issuance of the Notice of Filing Date Accorded.

The memo indicates that the new process applies to proceedings where the deadline for the patent owner preliminary response has not yet passed; however, if the time for filing discretionary denial briefing has already elapsed (i.e., it is more than two (2) months from the Notice of Filing Date Accorded), the patent owner may submit discretionary denial briefing within one (1) month of the date of the memo.

The memo also indicates that the new processes are “temporary” in nature due, in part, to the current workload needs of the PTAB. However, the memo does not set a time period for which the new processes will be in place.

We are continuing to monitor developments at the PTAB and analyzing decisions to determine whether any trends emerge on how the PTAB is applying its discretion to institute IPRs and PGRs. For additional information, please refer to our client alert.

This article appeared in the April 2025 issue of Sterne Kessler’s U.S. IP Updates newsletter. To view our past issues, as well as other firm newsletters, please click here.