USPTO Rescinds Fintiv Memo Guidance on Discretionary Denials in the PTAB

On February 28, 2025, the U.S. Patent and Trademark Office announced that it had rescinded a June 2022 memorandum addressing discretionary denials in post-grant proceedings before the Patent Trial and Appeal Board (“PTAB”). That earlier memorandum, entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” provided guidance on circumstances in which the PTAB would—or would not—use its discretion to deny institution of post-grant review proceedings in view of parallel district court litigation. The memorandum addressed the PTAB’s decision in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020), which the PTO had also designated as precedential. The Fintiv decision articulated six factors that the PTAB would consider in determining whether to institute a post-grant proceeding where there was also parallel district court litigation.

The June 2022 memorandum was viewed as narrowing the reach of the Fintiv decision and limiting the circumstances in which institution should be discretionarily denied. The memorandum stated that the PTAB would not deny institution of post-grant proceedings under Fintiv in the following circumstances:

1. When a petition presents compelling evidence of unpatentability;
2. When a request for denial under Fintiv is based on a parallel ITC (not district court) proceeding; or
3. 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 (a “Sotera Stipulation”).

In view of the PTO’s rescission of the memorandum, it is expected that the PTAB may exercise greater discretion to deny institution in view of parallel district court proceedings, although rescinding the memorandum does not mandate such denials.

The USPTO’s February 28, 2025 announcement also referred parties to the Fintiv and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) decisions for guidance. The announcement also stated that “[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.”

Honigman continues to closely monitor all activities and announcements from the USPTO. If you have questions about the PTO’s rescission of the June 2022 memorandum or other changes at the PTO, please contact one of Honigman’s Intellectual Property Attorneys.