The Return of ‘Fintiv’? Discretionary Denials of AIA Post-Grant Petitions Are Back on the Menu

In one of the first acts by the United States Patent and Trademark Office (USPTO) in the new administration, the USPTO – via an email sent February 28 – rescinded former USPTO Director Kathi Vidal’s 2022 memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (the 2022 Memorandum).

The 2022 Memorandum sought to limit the application of the precedential Fintiv decision in which the Patent Trial and Appeal Board (PTAB) set out certain factors panels should consider to discretionarily deny institution of post-grant proceedings (both IPRs and PGRs) when there is a parallel district court action pending. The 2022 Memorandum mandated that the PTAB “not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of patentability” or where a “petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB” (a so-called Sotera stipulation). The 2022 Memorandum also confined application of Fintiv to parallel district court proceedings and not parallel U.S. International Trade Commission proceedings, and required the PTAB to “consider the median time from filing to disposition of the civil trial date for the district in which the parallel litigation resides” when considering the proximity of the trial date to the final written-decision Fintiv factor.

The USPTO email rescinded the 2022 Memorandum and referred parties to the Fintiv and Sotera decisions. The email also explained that “[t]o the extent any other PTAB or Director Review decisions rely on the [2022] Memorandum, the portions of those decisions relying on the [2022] Memorandum shall not be binding or persuasive on the PTAB.”

The new USPTO guidance opens up arguments for patentees who had, since the issuance of the 2022 Memorandum, faced a decline in discretionary denials under Fintiv. Although the USPTO email says that decisions relying on the 2022 Memorandum are not only not binding but also not “persuasive,” it will be interesting to see how PTAB panels manage Fintiv arguments and whether opinions relying on or citing to the 2022 Memorandum will be rendered useless or will still carry some persuasive weight, even if unofficially. If nothing else, the recission of the 2022 Memorandum invites creative arguments from parties in post-grant proceedings.