On February 28, 2025, the USPTO issued a Notice rescinding a Memorandum issued by former Director Kathy Vidal, which, since June 21, 2022, had defined USPTO guidance regarding whether to discretionarily deny a post-grant proceeding under Apple Inc. v. Fintiv, Inc.[1]
The 2022 Memorandum had set forth the following clarifications regarding how the Patent Trial and Appeal Board (PTAB) was to apply Fintiv:
- Fintiv would not apply to parallel ITC proceedings
- Fintiv factor six – The PTAB would not discretionarily deny a petition that established "compelling merits" (i.e., where "the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence")
- Fintiv factor four – The PTAB would not discretionarily deny a petition 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" under Sotera Wireless, Inc. v. Masimo Corp.[2] and
- Fintiv factor two – The proximity to trial (i) would be analyzed using median time-to-trial statistics for the court at issue (rather than, e.g., scheduling orders) and (ii) "should not alone outweigh" the other Fintiv factors
The rescinded 2022 Memorandum was based, in part, on public comments, with the Memorandum being labeled an "interim procedure" pending the USPTO's exploration of potential rulemaking.
The USPTO's Notice rescinding the 2022 Memorandum indicates that, following the recission, parties to post-grant proceedings should instead seek guidance from the analysis set forth in the Fintiv and Sotera precedential decisions. Additionally, any portions of PTAB or Director Review decisions that rely on the 2022 Memorandum "shall not be binding or persuasive on the PTAB."
As a result of the recission, a "compelling" challenge or a Sotera stipulation may no longer be determinative in avoiding Fintiv discretionary denial. However, under Sotera, a stipulation will still cause Fintiv factor 4 to "weigh[] strongly in favor" of institution. For Fintiv factor two, the PTAB could revert to consideration of preliminary trial schedules, over median time-to-trial statistics, despite the 2022 Memorandum's concern that a "court's scheduled trial date … is not by itself a good indicator." Finally, with the recission, the PTAB is likely to reconsider whether a parallel ITC proceeding warrants exercising its discretion to deny institution under Fintiv—indeed, the Fintiv decision itself refers to such proceedings.
The true impact resulting from the 2022 Memorandum's recission may not be fully realized until there is a body of post-recission PTAB decisions that apply Fintiv.
[1] IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential).
[2] IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A).