Context: The NHK-Fintiv framework, first invoked in March 2020 and which the Acting Director of the United States Patent & Trademark Office (USPTO), Coke Morgan Stewart, recently reinstated (February 28, 2025 announcement by the USPTO), allows the Patent Trial and Appeal Board (PTAB) to deny inter partes reviews (IPRs) if parallel district court litigation is ongoing. The rule has resulted in pushback, particularly by large tech companies. In addition to this, Ms. Stewart then sent a memo to all PTAB judges establishing a new process for America Invents Act (AIA) proceedings, which would mean that prior to any potential merits proceedings, there will be a Director review of the patentee’s arguments for discretionary denial (March 27, 2025 ip fray article). We predicted that the two together would lead to discretionary denials going up substantially.
What’s new: A recent report by Unified Patents confirms that there has been a massive surge in PTAB discretionary denial decisions (May 27, 2025 Unified Patents report) in the latter half of Q1 2025 alone. Prior to the interim administration’s actions, there were no denials under these factors, but between March and May, there were at least 42 decisions addressing Fintiv issues. This number continues to grow, including with recent decisions in Samsung Electronics v. SiOnyx, LLC (June 6, 2025 USPTO PTAB decision), iRhythm Technologies v. Welch Allyn, and Klein Tools v. Milwaukee Tool (June 9, 2025 USPTO PTAB decision (PDF)).
Direct impact: The massive surge in denials, which underscores the challenges in pursuing IPR invalidity challenges at the USPTO, is three times higher than the decisions at Fintiv’s earlier height under Director Andrei Iancu in 2020 (a total of 167 for the entire year, so 13 a month). In contrast, Unified Patents notes that its last report only contained one Fintiv-related denial (over an entire quarter).
Wider ramifications: Some of the most recent denials have stirred some backlash, with former Director Kathi Vidal (now at Winston & Strawn) warning in a recent interview that the iRhythm Technologies v. Welch Allyn decision will have “far-reaching and damaging consequences”. Meanwhile, Ropes & Gray LLP’s Matt Rizzolo emphasized that the decision made in Klein Tools v. Milwaukee Electric Tool showed that “at least for the time being”, the United States International Trade Commission (ITC) is an “antidote” to the PTAB (June 12, 2025 Matt Rizzolo LinkedIn post).
“The USPTO is now on pace to quadruple discretionary denials under the new enhanced interim procedures,” the report concluded. Below, we have included some of the graphs from Unified Patents’ report, highlighting some of the key points of data.
For example, it found that of over 300 decisions on institutions entered between January and April 2025, over two-thirds were instituted. About 5% of those denied were for discretionary reasons, while only 3% were due to parallel litigation:
In April alone, over 60% of institution decisions were denied, with Fintiv-based denials making up about 40% of the 65 denials:
Below are the denials between 2016 and 2023, with 167 being the peak in 2020:
In her interview earlier this week, Ms. Vidal noted that the discretionary denial in iRhythm Technologies v. Welch Allyn both “discourages applicants from searching for prior art during prosecution, weakening patents overall,” while imposing “an unreasonable expectation on innovators to track every patent application they list that may later mature into a patent and to predict infringement arguments that may be made 12 years later on products that do not yet exist.”
Meanwhile, in his LinkedIn post, Mr. Rizzolo noted that, in Klein Tools v. Milwaukee Electric Tool, the two patents were the subject of a complaint at the ITC, with the IPR petitions being filed just three months after that complaint. He wrote:
“While the PTAB instituted IPRs in early April, they were then vacated by Acting Director Stewart just two months later on the basis that the ITC, which does not stay cases pending parallel PTAB proceedings, will make its Final Determination about six months before the deadline for the PTAB’s FWD.”