USPTO Issues Two Memos on PTAB Handling of Post-Grant Proceedings
In the wake of the USPTO’s February 2025 recission of its June 2022 interim procedure for discretionary denials, discussed previously here, the USPTO has followed up by issuing two memoranda providing further guidance on the issue. The two new memoranda relate to discretionary denials to institute post-grant proceedings, both inter partes reviews (IPRs) and post-grant reviews (PGRs).
The first memorandum, issued on March 24, 2025 by Scott Boalick, the PTAB’s chief administrative patent judge, provided further guidance with regard to the return to the previous policy on discretionary denials, including in view of the Board’s 2020 decisions in Fintiv[1] and Sotera.[2] The memorandum set forth five guide points in moving forward in view of the return to the USPTO’s previous policy:
1. Absent extraordinary circumstances, the Board will not revisit decisions made under the 2022 interim procedure, outside of the usual processes of requesting a rehearing or a Director Review.
2. The Fintiv factors will be applied not only when there is a parallel proceeding in a district court, but also when there are parallel proceedings at the International Trade Commission (ITC).
3. A Sotera stipulation that the petitioner will not pursue in district court (or the ITC) any ground that is raised or could have been raised in the IPR or PGR will be considered a “highly relevant” factor in favor of instituting post-grant proceedings, but will not by itself be dispositive.
4. The Board may consider the proximity of the district court trial date or the ITC’s final determination target date in its consideration whether to deny post-grant proceedings.
5. In considering the strength of the merits in the Fintiv analysis, compelling merits alone is not dispositive in making the assessment as to whether to institute post-grant proceedings.
The second memorandum, issued on March 26, 2025 by Coke Morgan Stewart, the USPTO’s Acting Director, provides for a process whereby the Director, in consultation with a board of at least three PTAB judges, will determine the appropriateness of discretionary denials of post-grant proceedings. In addition to discretionary considerations such as Fintiv factors this process will also take into account other parts of the Board’s workload, such as its statutory obligation to hear ex parte appeals from rejections during prosecution of patent applications. In doing so Acting Director Stewart seeks to maintain the Board’s capacity to timely handle proceedings, both the ex parte appeals it is required to consider, as well as any discretionary post-grant proceedings that are instituted.
The process will allow separate briefing on the issue of discretionary denial of institution of a post-grant proceeding. The patent owner may file a brief in favor of discretional denial after a petitioner files for post-grant proceedings, and the petitioner may file an opposition brief in response. The briefs are permitted to address all relevant considerations, including 1) whether the PTAB or another forum has already adjudicated the validity or patentability of the challenged patent claims; 2) whether there have been changes in the law or new judicial precedent issued since issuance of the claims that may affect patentability; 3) the strength of the unpatentability challenge; 4) the extent of the petition's reliance on expert testimony; 5) settled expectations of the parties, such as the length of time the claims have been in force; 6) compelling economic, public health, or national security interests; and 7) any other considerations bearing on the Director's discretion.
The USPTO’s stated goals in the new process are to “improve PTAB efficiency, maintain PTAB capacity to conduct AIA proceedings, reduce pendency in ex parte appeals, and promote consistent application of discretionary considerations in the institution of AIA proceedings.” It remains to be seen if the additional round of briefings will help achieve these goals, as opposed to just gumming up proceedings more.
The intellectual property attorneys at Renner Otto will continue to monitor this and other USPTO related news as it develops. Feel free to contact us for more information.
[1] Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ("Fintiv"). Fintiv set forth six factors to consider in denying post-grant proceedings in view of parallel proceedings in a district court: 1) whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2) proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3) investment in the parallel proceeding by the court and the parties; 4) overlap between issues raised in the petition and in the parallel proceeding; 5) whether the petitioner and the defendant in the parallel proceeding are the same party; and 6) other circumstances that impact the Board’s exercise of discretion, including the merits. Id. at 6.
[2] Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) ("Sotera").