Patent Lawyer Blog
On March 24, 2025, the USPTO officially reinstated the Fintiv factors framework for discretionary denials in post-grant proceedings with parallel litigation, following the February 2025 rescission of its 2022 Interim Procedure. This significant policy shift returns authority to Patent Trial and Appeal Board (PTAB) judges to deny institution of inter partes reviews (IPRs) or post-grant reviews (PGRs) when parallel proceedings exist in district courts or the International Trade Commission (ITC), using a multi-factor analysis that weighs timing, resource efficiency, and overall merits. The decision reinforces the USPTO’s priority on preventing duplicative litigation and potentially upholds a higher bar for challenging patents when concurrent proceedings are underway.
The memo, signed by Chief Administrative Patent Judge Scott R. Boalick, informs PTAB members that the USPTO is returning to its previous guidance, including the precedential decisions in Apple Inc. v. Fintiv, Inc. and Sotera Wireless, Inc. v. Masimo Corp.
Key Points from the Memorandum:
- Application to Pending Cases: The rescission applies to any case without an institution decision or where a request for rehearing or Director Review remains pending. The Board will consider requests for additional briefing on a case-by-case basis, but won’t revisit decisions if the time for seeking review has passed.
- ITC Proceedings: The Fintiv factors will apply to parallel proceedings at the ITC. The Board is “more likely to deny institution where the ITC’s projected final determination date is earlier than the Board’s deadline to issue a final written decision,” and less likely to deny institution when the ITC determination comes after the Board’s deadline.
- Sotera Stipulations: A timely-filed Sotera stipulation (where petitioners agree not to pursue in district court or ITC any ground raised or that could have been reasonably raised in the IPR/PGR) is “highly relevant, but will not be dispositive by itself” and will be considered as part of the holistic Fintiv analysis.
- Trial Date Evidence: In applying Fintiv, the Board may consider evidence about the proximity of trial dates or ITC determination dates, “including median time-to-trial statistics for civil actions in the district court in which the parallel litigation resides.”
- Merits Assessment: While the strength of the merits is considered in the exercise of discretion as part of a balanced assessment, “compelling merits alone is not dispositive in making the assessment.”
Practitioner Guidance
Patent challengers should carefully consider filing Sotera stipulations early, as these will be “highly relevant,” though not dispositive. When parallel ITC proceedings exist, practitioners should pay close attention to the projected final determination date relative to the PTAB’s deadline. For all parties, thoroughly documenting evidence regarding trial scheduling and presenting compelling merits will remain essential, as the Board will conduct a “balanced assessment of all the relevant circumstances.” Lastly, practitioners with pending cases should promptly evaluate whether to request additional briefing addressing the rescission’s impact on their specific matters.
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.