Evolving PTAB Practice: Discretionary Denial Requests and Strategic Considerations for IPR Proceedings

Practice before the PTAB in IPR proceedings has typically followed established procedures. Recently, however, PTAB practice has shifted due to increased involvement by the Director, currently the Acting Director, in discretionary denial requests. This change in discretionary denial decision-making has altered what had previously been an infrequently implemented intervention by the Director in the institution process.

The June 21, 2022, Memorandum, by then Director Kathi Vidal (Vidal Memorandum), states “[t]he PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel [] litigation where a petition presents compelling evidence of unpatentability.”  However, the effect of this memorandum was short-lived as on February 28, 2025, the USPTO issued a memorandum (2025 Memorandum) rescinding the Vidal Memorandum and reverting analysis of discretionary denial requests back to the pre-Vidal era.  Taking a step even further, the 2025 Memorandum explicitly states “[t]o the extent any other PTAB or Director Review decisions rely on the Memorandum, the portions of those decisions relying on the Memorandum shall not be binding or persuasive on the PTAB.”  The 2025 Memorandum refers parties to previous PTAB precedent that includes the Fintiv Factors (see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)) and the Sotera Stipulation (see Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § 11.A)).  The Fintiv Factors include factors associated with a parallel proceeding such as likelihood of a stay, trial date, investment, etc. while the Sotera Stipulation is an agreement by the petitioner to not raise in a parallel proceeding any invalidity arguments raised or that could have reasonable been raised in the IPR petition.  This rescission opened the door to a broader basis for evaluation of discretionary denial requests that includes broader discretion to evaluate more factors than the well-known Fintiv Factors and Sotera Stipulation.

A review of discretionary denial requests granted (proceedings are not instituted) since June 6, 2025, shows that ten key factors influence these non-institution decisions.  Among these ten factors, the most frequently cited are settled expectations and overlap with another proceeding.  Generally, the decisions relying on settled expectations as a basis for grant of a discretionary denial request cite to one or more of the other factors, such as number of years that a patent-at-issue has been in force—the issue date of the patent-at-issue.  The longer the patent-at-issue has been in force the more the scale tips toward non-institution.

Recently, however, an additional factor has been cited to grant a discretionary denial request – patent owner showing of commercialization, licensing and/or marking.  While such has been discussed in several decisions, this type of showing by the patent owner has not been cited as a reason for grant.  Thus, discretionary factors are ever-evolving and it will be interesting to see what additional factors may be proved to be advantageous to a patent owner or a petitioner.

Another recent trend is the reliance by a petitioner on a national security argument.  This has not proven to be a persuasive argument for petitioners.  The decisions that discuss such an argument require details that heretofore have not been provided by petitioners.  Petitioners making a national security argument will likely need to provide very specific and tailored information regarding a particular product.  Mere inclusion of a petitioner’s product in a key national security interest endeavor does not seem to be sufficiently persuasive to overcome the current tendency to grant requests for discretionary denial.

While not cited as a factor in every decision, the overlap with another proceeding factor is the most cited factor as a basis for grant of a request for discretionary denial.  This factor is often cited alongside other factors such as meaningful investment in another proceeding and unlikeliness of  a stay in a parallel proceeding.  Docketing orders setting forth important deadlines in a parallel proceeding are key in analyzing this factor.  For example, the date of a Markman hearing, discovery deadlines, and trial date are all considered when weighing this factor.  Because of the prevalence of this factor, filing an IPR petition early is likely the best strategy for a petitioner to overcome this factor.   With the recent announcement by Chief Administrative Patent Judge for the PTAB, Scott R. Boalick, that a Notice of Filing Date Accorded will be issued within two weeks of the filing of an IPR petition, petitioners have even more incentive to file early so as to receive a file written decision due date that is well in advance of any potential trial date.

Key strategies from the analysis of the various factors cited in decisions granting requests for discretionary denials have emerged.  Analogizing current facts to previous proceedings may also lend weight to arguments made by both petitioner and patent owner.  For petitioners and patent owners alike, key factors are addressing the timing of an IPR petition and including arguments that provide details at least for the settled expectation.