Context: Less than a month ago, Acting Director of the United States Patent & Trademark Office (USPTO) Coke Morgan Stewart rescinded a memo by former Director Kathi Vidal that narrowed the application of the Fintiv criteria for discretionary denials of inter partes reviews (IPRs) of patents by the USPTO’s Patent Trial and Appeal Board (PTAB) (February 28, 2025 announcement by the USPTO).
What’s new: Yesterday (March 26, 2025), United States Patent & Trademark Office (USPTO)Acting Director Morgan Stewart sent a memo to all PTAB judges establishing a new processfor America Invents Act (AIA) proceedings. The gist is that prior to any potential merits proceedings that would start with a decision to institute an IPR or a post-grant review (PGR), there will be a Director review of the patentee’s arguments for discretionary denial.
Direct impact: This change of procedural rules, combined with the recent decisionto reinstate the Fintiv rule, is a clear indication that discretionary denials will go up substantially. It also appears possible that even if a review is instituted, AIA proceedings (from petition to resolution) will take longer, which means some cases will go to trial instead of being stayed.
Wider ramifications: There have been plenty of signs of the Trump Administration considering it necessary to Make American Patents Strong Again as part of its agenda to Make America Great Again. In a March 20, 2025 article on an investment by Donald Trump Jr. in Erich Spangenberg’s new patent monetization business SIM IP, we discussed Secretary of Commerce Howard Lutnick’s and the next USPTO Director John Squires’s past involvement with patent protection and monetization.
First, here’s that very important memo:
The new process that leads to decision on whether to institute an IPR or PGR is a bifurcated one:
- In a first step, the USPTO Director, in consultation with at least three PTAB judges, decides on a potential discretionary denial. There will normally be only two briefs of up to 14,000 words, though further briefing (a reply brief of up to 5,600 words) may be allowed. Patentees go first, arguing within two months of the petition’s filing date why there should be a discretionary denial. Petitioners then get one month to oppose.
- Only if there is no discretionary denial will the petition be assigned to a three-judge merits panel, which can still deny the petition on merits or other non-discretionary statutory grounds.
As for the legal standard for a discretionary denial, the memo points to three key precedential decisions:
- Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (generally precedenial)
- General Plastic Indus_ Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (Sept. 6, 2027) (precedential as to § II.B.4.i); and
- Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (Feb. 13, 2020) (generally precedential).
Besides referencing precedent, it highlights the following considerations:
- Whether the PT AB or another forum has already adjudicated the validity or
- patentability of the challenged patent claims;
- Whether there have been changes in the law or new judicial precedent issued
since issuance of the claims that may affect patentability; - The strength of the unpatentability challenge;
- The extent of the petition’s reliance on expert testimony;
- Settled expectations of the parties, such as the length of time the claims have
been in force; - Compelling economic, public health, or national security interests; and
- Any other considerations bearing on the Director’s discretion.
What further ups the ante for petitioners is that “[t]he Director will also consider the ability of the PTAB to comply with pendency goals for ex parte appeals, its statutory deadlines for AJA proceedings, and other workload needs.” Those are additional grounds for discretionary denial that go beyond the specifics of the petition at hand and enable denial based on resource allocation considerations. And the PTAB’s resources could be impacted by a rumored return-to-office mandate.
It’s a safe assumption that Acting Director Morgan Stewart would not have taken this step if there was a risk of incoming Director Squires rescinding that memo or replacing it with something unrecognizable. But the memo says at its end that it is “temporary in nature due, in part, to the current workload needs of the PTAB.”
Owners of U.S. patents, unless they are primarily defendants to patent infringement lawsuits, will be very pleased.