PTAB Discretionary Denials Explained

Today, we’re unraveling the complexities of the discretionary denials from the Patent Trial and Appeal Board - known as PTAB. If you're a patent attorney, litigator, or simply someone navigating the world of patent law, you've probably heard a lot about the Fintiv decision and how it has shaped PTAB rulings in recent years. Add to that the introduction and recent rescission of the Interim Guidelines, and it’s clear we’re dealing with a dynamic, evolving landscape.  

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USPTO’s Rescission of its Discretionary Denial Memorandum – Much Ado About Nothing?

About the author
Kyle W. Kellar

Transcript

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Hello and welcome to today's episode of Womble Perspectives.

Today, we’re unraveling the complexities of the discretionary denials from the Patent Trial and Appeal Board - known as PTAB. If you're a patent attorney, litigator, or simply someone navigating the world of patent law, you've probably heard a lot about the Fintiv decision and how it has shaped PTAB rulings in recent years. Add to that the introduction and recent rescission of the Interim Guidelines, and it’s clear we’re dealing with a dynamic, evolving landscape.  

By the end of today’s episode, you’ll have a solid understanding of discretionary denials, what the Fintiv factors mean for petitioners, and how the PTAB has been operating since the Interim Guidelines were rescinded. Plus, we'll share actionable insights for practitioners as they strategize in light of the current status quo.  

So let’s jump in.

To understand PTAB discretionary denials, we need to begin with the landmark 2020 decision in Apple Inc. v. Fintiv, Inc.. Here, the PTAB panel denied Apple’s petition to institute an inter partes review, or IPR, because of an ongoing district court litigation already in an advanced stage.  

This decision outlined six non-exclusive factors, now widely known as the Fintiv factors, to evaluate whether a PTAB review should move forward when a parallel proceeding is underway.  

These factors include:  

1.     Whether the court granted or is likely to grant a stay.  

2.     How close the district court trial date is to the PTAB’s decision deadline.  

3.     The level of investment already made in the parallel case.  

4.     The overlap between issues in the PTAB petition and district court litigation.  

5.     Whether the petitioner and litigation defendant are the same entity.  

6.     Any other relevant circumstances, such as the merits of the IPR petition itself. 

The Fintiv decision aimed to prevent duplicative efforts between the courts and the PTAB. However, the decision led to a significant increase in denials, sparking concerns about fairness and consistency.  

Now fast forward to June 2022. The patent community’s concerns caught the attention of USPTO Director Kathi Vidal, who issued the Interim Guidelines. These provided much-needed clarification and adjustments to PTAB practice.  

The changes in the guidelines were substantial. First, ITC proceedings, which don’t result in monetary damages or directly impact validity, could no longer be used as a basis for denial. Second, the guidelines introduced what’s known as Sotera stipulations. If a petitioner agreed not to pursue invalidity grounds in litigation that overlapped with their PTAB petition, their request would not be denied.  

Lastly, compelling evidence of unpatentability became a significant exception. If the petition demonstrated strong evidence that a patent claim was invalid, the Board was more likely to proceed—even in the face of parallel litigation.  

Another notable change was the emphasis on median time-to-trial statistics. Since scheduled trial dates can be overly optimistic, the use of court-specific median times helped the PTAB make more realistic assessments.  

After these guidelines were introduced, the number of discretionary denials dropped noticeably. However, this era came to an end on February 28, 2025, when the Interim Guidelines were rescinded.  

When the Interim Guidelines were rescinded, practitioners braced themselves for a return to a more restrictive landscape resembling the post-Fintiv spike in denials. But so far, the shift has been... underwhelming.  

Early decisions show little change in PTAB practice. For example, in Savant Technologies LLC v. Feit Electric Company, Inc., the panel considered both trial dates and median time-to-trial statistics when assessing parallel proceedings. A similar approach was seen in Adobe Inc. v. Jaffe, where time-to-trial statistics factored into the decision, even without referencing the rescinded guidelines.  

Interestingly, in Toyota Motor Corp. v. Emerging Automotive LLC, the PTAB denied an IPR petition because the parallel case was very advanced, illustrating that the Board still gives significant weight to procedural progress.  

While these cases suggest a certain continuity, practitioners should remain cautious. The absence of the Sotera stipulations in current policy could still lead to an increased burden for petitioners over time.  

What does all this mean for practitioners? Here are a few of my key takeaways based on the current state of PTAB practice.  

First, trial dates and time-to-trial statistics will continue to play a significant role. If no trial date is set, presenting robust time-to-trial metrics can be crucial. On the other hand, when trial dates are established, be prepared for them to take precedence.  

Second, focus on the merits of your petition. With “compelling evidence” of unpatentability still considered a strong factor, crafting a solid, well-supported petition is more important than ever.  

Finally, keep monitoring post-rescission trends. It’s still early days, and as more decisions are issued, we may yet see shifts in PTAB practice.   

And there you have it, a comprehensive look at PTAB discretionary denials from the landmark Fintiv decision to the impact of the Interim Guidelines and their rescission. While the dust has yet to settle, it’s clear practitioners must stay vigilant and adapt to the evolving landscape.  

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