Discretionary Denials at the PTAB: Strategic Insights for Petitioners and Patent Owners in a Shifting Landscape

I. Introduction
A set of recently issued memoranda by United States Patent and Trademark Office (“USPTO”) officials has re-energized the debate around discretionary denials in post-grant trials at the Patent Trial and Appeal Board (“PTAB”). In February 2025, the USPTO rescinded former USPTO Director Kathi Vidal’s Interim Procedure for Discretionary Denials Memorandum (“Vidal Memo”).[1] A few weeks later, Chief Administrative Patent Judge Scott Boalick issued guidance on the recission (“Boalick Memo”),[2] and Acting Director Coke Morgan Stewart issued an interim memorandum explaining processes for the PTAB’s Workload Management(“Workload Memo”).[3] Together, these memoranda indicate that the PTAB is once again leaning into its authority to deny institution based on parallel litigation and resource constraints. These changes demand patent stakeholders in all technology fields to recalibrate their approach to post-grant strategy. This article analyses the new discretionary denial framework, drawing on recent decisions and emerging trends to guide IP stakeholders to make informed, strategic choices.

II. The Policy Reset: What Changed and Why It Matters
The February 2025 rescission of the Vidal Memo marks a return to the PTAB’s earlier, more flexible approach to discretionarily denying institution of post-grant proceedings. This approach was largely defined by two of the Board’s precedential opinions, Apple Inc. v. Fintiv, Inc.[4] and Sotera Wireless, Inc. v. Masimo Corp.[5] Central to this Fintiv/Sotera framework are the six so-called Fintiv factors, which the Board analyzes when the Petitioner and/or Patent Owner are engaged in parallel litigation. The Fintiv factors include:

1. Whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted;
2. Proximity of the court’s trial date to the Board’s projected statutory deadline;
3. Investment in the parallel proceeding by the court and the parties;
4. Overlap between issues raised in the petition and in the parallel proceeding;
5. Whether the petitioner and the defendant in the parallel proceeding are the same party; and
6. Other circumstances that impact the Board’s exercise of discretion, including the merits.[6]

These Fintiv factors are intended to prevent duplicative proceedings while conserving judicial and administrative resources. However, their application has been controversial, particularly in fast-moving jurisdictions like the Western and Eastern Districts of Texas, where early trial dates and resulting earlier investments in litigation often led to discretionary denials regardless of the petition’s merits.

The Sotera side of the Fintiv/Sotera framework refers to the common strategic choice of parties to stipulate to certain estoppel grounds, a choice popularized in Sotera Wireless, Inc. v. Masimo Corp. Before the current policy shift, a petitioner could overcome discretionary denial under Fintiv by agreeing to not pursue in district court “any ground raised or that could have been reasonably raised” in the post-grant proceeding under a “Sotera stipulation.”[7]

With the rescission of the Vidal Memo, which had limited the application of Fintiv factors in evaluating discretionary denial arguments,[8] the PTAB has returned to its more discretionary posture. In addition to restoring the greater probative weight given to the Fintiv factors, the Boalick Memo removed the dispositive effect of Sotera stipulations.[9] Further, the Workload Memo identifies seven new discretionary denial factors for consideration. They are:

1. Whether the PTAB or another forum has already adjudicated the validity or patentability of the challenged patent claims;
2. Whether there have been changes in the law or new judicial precedent issued since issuance of the claims that may affect patentability;
3. The strength of the unpatentability challenge;
4. The extent of the petition’s reliance on expert testimony;
5. Settled expectations of the parties, such as the length of time the claims have been in force;
6. Compelling economic, public health, or national security interests; and
7. Any other considerations bearing in the Director’s discretion (e.g., workload impact on USPTO).[10]

While there is some natural overlap between several of the new discretionary denial factors and the Fintiv factors,[11] these factors introduce several new considerations, including the parties’ settled expectations, compelling economic, public health, or national security interests, and the extent of the petition’s reliance on expert testimony. Importantly, either party may address any or all of these factors in a briefing, although some factors have already been proven to be frequently relied upon by the Director, as discussed in Section IV, below. Notably, panels may now consider the Board’s workload and resource allocation when deciding whether to institute trial.[12] Every decision has since held that, irrespective of the arguments presented, “the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented.”[13]This policy shift—which prioritizes litigation posture and institutional efficiency—has already elevated the importance of non-merits considerations for petitioners and patent owners alike.

III. New Policies, New Procedures
Against this new policy backdrop, the Board now evaluates petitions through an entirely new bifurcated process that first assesses these discretionary denial considerations (depicted below).[14] Under the new process, Patent Owners can file two separate preliminary responses—one that first addresses discretionary denial issues, and another addressing the merits. Importantly, a panel consisting of the Director, in consultation with at least three senior Administrative Patent Judges, now evaluates whether to exercise discretion to deny institution independently of the decision whether to institute on the merits of the petition.[15]

IV. Recent Decisions Emphasize the Return to Discretion
The return toward discretionary denial is notably present in the Director’s June 6, 2025, decision to deny institution in iRhythm Technologies, Inc. v. Welch Allyn, Inc.[16] In that case, the Director exercised discretion to deny five consolidated IPR petitions based on the parties’ settled expectations and “holistic” considerations of the case. [17]

More specifically, the Director found the following facts favored denial:

• Settled Expectations: The Director concluded that, because at least some of the patents had been in force since as early as 2012 and Petitioner was aware of them as early as 2013, the parties developed settled expectations favored discretionary denial.[18]
• Holistic Considerations: The Director repeated the same statement it has made in its other decisions, emphasizing the holistic considerations driving its decision: “Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the petition is denied under 35 U.S.C. § 314(a).”[19]

Admittedly, however, the Director noted that “[s]everal arguments weigh[ed] against discretionary denial,” including:

• Sooner Trial Date: Projected final written decision due date is August 12, 2026, but trial date is not until March 22, 2027.[20]
• Litigation Investment and Likelihood of District Court Stay: “There also appears to be little investment by the parties in the district court proceeding and a high likelihood of a stay if an [IPR] is instituted.”[21]
• Reliance on Expert Testimony in Petition: The Director distinguished using an expert’s testimony “to explain background knowledge of a person of ordinary skill in the art, and the expert provides citations to evidence in support of his statements in the required manner” from using expert testimony “to fill gaps in the prior art.” In the former category, the Director indicated, petitioners are likely not over-reliant on expert testimony such that the reliance counsels against institution.[22]

The Director was ultimately persuaded, however, that settled expectations favored discretionary denial and outweighed all other considerations favoring institution.[23]

The iRhythm case, taken together with the Director’s June 18 decision in Dabico Airport Solutions Inc. v. AXA Power APS,[24] underscores the Patent Office’s renewed willingness to exercise discretionary denial based on the parties’ settled‑expectations alone, without any regard to the strength of the merits. The Director in Dabico noted that the challenged patent had been in force for almost eight years, and “[a]lthough there is no bright-line rule on when expectations become settled, in general, the longer the patent has been in force the more settled expectations should be.”[25] Further, the Director indicated that “the Office is disinclined to disturb the settled expectations” in the absence of petitioner’s failure to provide any persuasive reasoning why an inter partes review would be an appropriate use of USPTO resources.[26] Since these initial decisions, settled expectations continues to be a prominent factor driving discretionary denial, especially in cases where patents have been in force for 8+ years, or where petitioners were aware of patents years before challenging them.[27]

Since the policy shift, institution decisions have reflected the Director’s more assertive use of discretion. Although the first few decisions on discretionary denial have not shown a wholesale preference for any one consideration, the Director appears willing to deny institution where:

• District court litigation is well underway—discovery has completed and/or Markman orders have issued;[28]
• District Court statistics or proceedings suggest a trial date before or within several weeks of the expected Final Written Decision date;[29]
• Petitioners delay filing or fail to agree to a Sotera-style stipulation;[30]
• The challenged patent has enjoyed a lengthy term and the challenger knew of the patent prior to challenging it—with the Director now finding settled expectations persuasive for patents in force as few as 8 years;[31]
• International Trade Commission (“ITC”) proceedings are pending or advanced—which appears to carry some weight even if petitioners are not a party to the ITC investigation;[32]
• Time‑barred petitioners seek joinder—with the Director emphasizing that such petitions “should proceed only in exceptional circumstances”;[33]
• Multiple parallel proceedings create risk of duplicative outcomes—including situations where the same petitioner has previously challenged related patents;[34]
• Other forums have already adjudicated patent validity—particularly where Federal Circuit or district court decisions exist;[35] or
• The case would undermine the efficient use of PTAB resources—including concerns over original petitioners in joinder scenarios settling or withdrawing.[36]

Most of the decisions thus far are based on a balancing of multiple of these factors. However, several decisions focus on one of the factors, suggesting the Director can be persuaded by a single reason to exercise discretionary denial, which hasn’t been the case in the past.

V. Strategic Considerations
The effects of these recent developments are not confined to post grant proceedings; they directly influence the broader litigation landscape. For parties engaged in parallel district court litigation—either as a patent-rights holder or an accused infringer—the stakes in filing post‑grant proceedings have gotten higher, and the timing more critical. As such, rights holders and accused infringers alike should be prepared with a strategy for navigating the changing tides. Petitioners and Patent Owners should consider the following, respectively:

1. All Parties: Early Preparation

There are many reasons why post-grant proceedings remain an attractive option for accused infringers to challenge the validity of certain patents. But doing so now demands precision and proactivity. Potential petitioners should take stock of any invalidity positions—particularly anticipation and obviousness positions based on patents and printed publications—as soon as possible. Petitioners, particularly those accused of infringing the challenged patents in judicial districts with quicker times-to-trial or before the ITC, should consider preemptively challenging validity before any proceeding is brought. However, petitioners should be mindful that patents in force for 8+ years may face heightened scrutiny regarding settled expectations, even without other complicating factors.

For patent owners, early preparation is equally important. As soon as litigation is anticipated or initiated, patent owners should assemble a record of discretionary denial arguments. This may include evidence of the district court’s schedule, the parties’ investment in the litigation, and any overlap in invalidity contentions. So far, the most effective patent owners present the Board with a compelling narrative—grounded in both legal precedent and equitable considerations—that institution would be inefficient, duplicative, or otherwise unfair.

2. Petitioners: Use Stipulations Thoughtfully

A well-crafted Sotera-style stipulation can be a powerful tool to avoid discretionary denial, but it is unlikely to be the silver bullet as it has been in the past. The Director has indicated that Sotera stipulations will be scrutinized more closely—boilerplate language will not cut it, especially when petitioners raise the same or similar invalidity arguments they raise in parallel district court proceedings. In one decision issued June 12, 2025, for example, the Director discretionarily denied institution even though parties had a Sotera stipulation in place. According to the Director, because Petitioner’s invalidity arguments in the district court “[were] more expansive and include[d] combinations of the prior art asserted in [the IPR] proceedings with unpublished system art,” the Sotera stipulation between the parties would not prevent the risk of duplicative litigation.[37]

At least one recently-issued decision demonstrates that a broad Sotera-style stipulation can effectively persuade the Director to refer the petitions to be considered on the merits, particularly when presented in cases challenging multiple patents that stretch across various subject matter areas. In a June 13, 2025 decision, the Director appeared to credit petitioner Tesla’s “broad stipulation” and determined that, when examined alongside “large number and vast scope of the patents asserted in the [parallel] district court litigation … weigh[ed] against discretionary denial, as the Board is better suited to review a large number of patents involving diverse subject matter.”[38]

Thus, while Sotera-style stipulations can still help avoid discretionary denial, any stipulation must be precise and comprehensive to be effective. Petitioners should tailor stipulations to the specific grounds raised and ensure they meaningfully reduce duplicative litigation risk.

3. Petitioners: Anticipate Workload-Based Denials

The Director’s March 2025 memorandum has introduced a new and increasingly influential basis for discretionary denial: workload management. Under this guidance, PTAB panels are encouraged to consider the strain that institution might place on the Board’s limited resources,[39] which could particularly impact cases involving multiple petitions, voluminous records, or highly technical subject matter. Petitioners should be mindful of this evolving factor and take steps to minimize the strain their filings may perceptively place on the Board. This may include affirmatively presenting the Director with fact-rooted arguments explaining why the discretionary denial factors favor institution; consolidating challenges into fewer, more focused petitions; coordinating with co-defendants to avoid duplicative efforts; and strategically presenting only the more compelling invalidity arguments.

Petitioners should also carefully evaluate joinder scenarios. The Director has expressed concern about maintaining proceedings for joined parties if original petitioners settle or withdraw. To overcome this, petitioners seeking joinder should proactively address why their participation provides meaningful efficiencies and resource savings benefits beyond the original proceedings. In this environment, procedural and substantive economy is not just a courtesy—it is a strategic imperative.

4. Patent Owners: Leverage the New Levers

For patent owners, the current discretionary denial framework offers a broader set of tools to defend against institution. With the PTAB now placing greater emphasis on procedural posture, resource allocation, and equitable considerations,[40] patent owners should proactively develop a record that holistically supports denial. This includes highlighting the maturity of parallel litigation (including litigation at the ITC[41])—such as completed Markman hearings or sooner-anticipated trial dates—demonstrating the duplicative nature of the issues raised in the petition and emphasizing the burden that instituted post-grant proceedings would place on the Board. Additionally, patent owners should not hesitate to raise fairness-based arguments, particularly where the petitioner delayed filing, is time‑barred and seeking joinder, or otherwise appears to be using the IPR process tactically. Patent owners should also highlight when patents have been dismissed from parallel litigation or when the same petitioner has previously challenged related patents, as these circumstances now carry significant weight in discretionary denial analysis. In this environment, a well-timed and comprehensive request for discretionary denial can be a decisive factor in preserving patent rights.

VI. Conclusion
Discretionary denial is once again a critical factor in post-grant strategy. With the return of Fintiv-style analysis and the introduction of several new and independently influential considerations, stakeholders must be more strategic than ever. Whether you’re defending a core patent, challenging a competitor’s portfolio, or evaluating IP in a transaction, understanding the new rules of engagement is essential.

The intricacies of the discretionary denial framework’s impact are still unfolding and we expect continued evolution in the USPTO’s approach as more decisions are issued.

^{[1] Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation, USPTO, accessible via https://www.uspto.gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (June 21, 2022), rescinded Feb. 28, 2025.
[2] Guidance on USPTO’s recission of “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation”, USPTO, accessible via https://www.uspto.gov/sites/default/files/documents/guidance_memo_on_interim_procedure_recission_20250324.pdf (March 24, 2025).
[3]Interim Processes for PTAB Workload Management, USPTO, accessible via https://www.uspto.gov/sites/default/files/documents/InterimProcesses-PTABWorkloadMgmt-20250326.pdf (March 26, 2025).
[4] IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential).
[5] IPR2020-01019, Paper 12 (Dec. 1, 2020) (precedential as to § II.A).
[6] Fintiv, IPR2020-00019, Paper 11, at 6.
[7] Sotera, IPR2020-01019, Paper 12, at 13.
[8] See generally Vidal Memo, at 2.
[9] See Boalick Memo, at 2–3. See also Shenzen Tuozhu Tech. Co. Ltd. v. Stratasys, Inc., IPR2025-00354, Paper 11, at 2 (June 12, 2025) (denying institution where Sotera stipulation would not prohibit Petitioner from raising prior art combinations with unpublished system prior art in parallel district court proceedings).
[10] Workload Memo, at 2-3.
[11] See, e.g., Stingray Group Inc. v. Edwin A. Hernandez-Mondragon, IPR2025-00351, Paper 18, at 6-10 (June 12, 2025) (analyzing Fintiv factors in view of guidance from Workload Memo).
[12] See Workload Memo, at 2-3.
[13] See, e.g., iRhythm Techs., Inc. v. Welch Allyn, Inc., IPR2025-00363, -00374, -00376, -00377, -00378, Paper 10, at 3 (June 6, 2025); Ultrahuman Healthcare Pvt. Ltd. v. Ouraring, Inc., IPR2025-00411, Paper 12, at 3 (June 25, 2025). .
[14] Workload Memo, at 1-2.
[15] See Workload Memo, at 1 (discretionary considerations will be address before merits considerations); But see Workload Memo Factor 3 regarding the “strength of the unpatentability challenge.”
[16] IPR2025-00363, -00374, -00376, -00377, -00378, Paper 10.
[17] Id. at 3.
[18] Id.
[19] Id.
[20] Id. at 2.
[21] Id.
[22] Id.
[23] See id. at 3.
[24] IPR2025-00408, Paper 21 (June 18, 2025).
[25] Id. at 3.
[26] Id.
[27] See Google LLC et al. v. Mullen Industries LLC, IPR2025-00197, -00227, -00365, -00366, -00367, -00368, -00369, Paper 14, at 4 (June 25, 2025) (tipping the balance in favor of discretionary denial where patent in force for 8+ years in combination with considerations of inefficiency); Samsung Electronics Co., Ltd. et al. v. Cerence Operating Company, IPR2025-00458, -00459, -00460, Paper 14, at 2 (June 25, 2025) (favoring discretionary denial where patent in force for 11+ years); Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc., IPR2025-00433, -00435, Paper 11, at 3 (June 26, 2025) (finding settled expectations stronger when the challenged patents had been in force for 9 and 7 years); Ericsson Inc. v. Procomm International PTE. Ltd., IPR2024-01452, -01453, -01454, Paper 16, at 2-3 (June 25, 2025) (tipping the balance in favor or discretionary denial where patent was “in force since as early as 2006 and Petitioner was of aware of it as early as 2013). But see POSCO Co., Ltd. v. ArcelorMittal, IPR2025-00370, -00371, Paper 10, at 2-3 (June 25, 2025) (finding that settled expectations that “the Board previously determined related claims to be unpatentable—prior to the issuance of the challenged claims in this proceeding—tips the balance against discretionary denial”); GD Energy Products, LLC v. Kerr Machine Company, PGR2025-00031, Paper 14, at 2 (June 25, 2025) (finding “no settled expectations because the challenged patent issued on November 26, 2024” and “early challenges to patents favor robust, predictable patent rights and weigh against discretionary denial”).
[28] See, e.g., Cerence, IPR2025-00458, Paper 14, at 2; Neogenomics Laby’s, Inc. v. Natera, Inc., IPR2025-00455, Paper 13 (June 12, 2025); Advanced Micro Devices, Inc. & Pensando Sys., Inc. v. Concurrent Ventures LLC & Xtreamedge, Inc., IPR2025-00223, Paper 9, at 2 (June 12, 2025) (Scheduled Markman hearing prior to projected institution decision date weighed in favor of discretionary denial).
[29] See, e.g., Cisco Systems, Inc. v. WSOU Investments LLC, IPR2025-00429, Paper 15, at 2 (June 25, 2025) (trial April 2026, FWD July 2026); Full-Metal-Power B.V. v. InFocus Downhole Solutions USA LLC, IPR2025-00391, Paper 14 (June 25, 2025) (trial June 22, 2026, FWD July 30, 2026); Google, IPR2025-00197, Paper 14, at 3 (trial November 2025, FWD July-August 2026); Advanced Micro, IPR2025-00223, Paper 9, at 2(trial June 29, 2026, FWD July 15, 2026);
[30] See Full-Metal-Power, IPR2025-00391, Paper 14, at 2 (“Petitioner has not offered a stipulation, despite overlap in the prior art grounds between the proceedings”); see also Guidance on USPTO’s recission of “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” at 2 n.1 (citing NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Sept. 7, 2022) (precedential) (holding that the only appropriate time for a petitioner to offer a stipulation is prior to the Board’s decision on institution), accessible via https://www.uspto.gov/sites/default/files/documents/guidance_memo_on_interim_procedure_recission_20250324.pdf (Mar. 24, 2025).
[31] See iRhythm, IPR2025-00363, Paper 10, at 3; Dabico, IPR2025-00408, Paper 21, at 2; Google, IPR2025-00197, -00227, -00365, -00366, -00367, -00368, -00369, Paper 14, at 4; Cerence, IPR2025-00458, -00459, -00460, Paper 14, at 2; Ericsson, IPR2024-01452, -01453, -01454, Paper 16, at 2-3.
[32] See Ultrahuman Healthcare Pvt. Ltd. v. Ouraring, Inc., IPR2025-00411, Paper 12, at 2 (June 25, 2025) (ITC August 2025, FWD July 2026); RingConn LLC v. Ouraring, Inc., PGR2025-00018, Paper 11, at 2 (June 25, 2025) (ITC August 2025, FWD July 2026); POSCO, IPR2025-00370, Paper 10, at 2 (June 25, 2025) (stating that challenged patent’s involvement in a parallel proceeding scheduled to conclude October 2025 before July 2026 FWD favored discretionary denial, although ultimately denying discretionary denial where petitioner not direct ITC party).
[33] Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11, at 2-3 (June 25, 2025).
[34] Comcast Cable Communications, LLC v. Entropic Communications, LLC, IPR2025-00183, Paper 11, at 2 (June 25, 2025) (“[T]he practice of the same party filing multiple petitions challenging the same patent, as Petitioner has done here and in the earlier proceedings challenging the ’682 patent, is disfavored”).
[35] Celltrion, Inc. v. Regeneron Pharmaceuticals, Inc., IPR2025-00456, Paper 14, at 2 (June 25, 2025) (“[O]ther forums—the Northern District of West Virginia and the U.S. Court of Appeals for the Federal Circuit—have already adjudicated the validity of the challenged patent claims”).
[36] See generally Workload Memo, at 3; see also Sportradar AG v. SportsCastr Inc., IPR2025-00265, Paper 19, at 3 (June 25, 2025) (“[I]f the petitioner in [the joined proceeding] settles or is otherwise no longer involved in that proceeding, the Office would have to maintain a proceeding that it would not have instituted with respect to the Petitioners here.”); Ultrahuman, IPR2025-00411, Paper 12, at 2 (same concerns over joinder); RingConn, PGR2025-00018, Paper 11, at 2 (same concerns over joinder); Elong International USA Inc. v. Feit Electric Company, Inc., IPR2025-00258, Paper 16, at 3 (June 25, 2025) (same concern regarding orphaned proceedings); Google, IPR2025-00197, Paper 14, at 3 (trial November 2025, FWD July-August 2026) (“[I]t is an inefficient use of Board resources to review the ’540 patent that has been dismissed from the litigation”); Ericsson, IPR2024-01452, -01453, -01454, Paper 16, at 3 (“[I]t is an inefficient use of Board resources to review a challenged patent that has been dismissed with prejudice from the litigation.”); Dabico, IPR2025-00408, Paper 21, at 3 (“Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Office Resources”); Tessell, Inc. v. Nutanix, Inc., IPR2025-00322, Paper 14, at 2 (June 12, 2025) (“It is not an appropriate use of Office resources where the inventors applied for and were issued a patent, but, as is the case here, now advocate for its unpatentability.”).
[37] Shenzen Tuozhu Tech. Co. Ltd. v. Stratasys, Inc., IPR2025-00354, Paper 11, at 2 (June 12, 2025).
[38] Tesla, Inc. v. Intell. Ventures II LLC, IPR2025-00217, -00219, -00220, -00221, -00222, -00339, Paper 10, at 3 (June 13, 2025).}

^{[39] See generally Workload Memo, at 3.
[40] Tessell, Inc. v. Nutanix, Inc., IPR2025-00322, Paper 14, at 2 (June 12, 2025) (“[T]he Office may consider unfair dealings as a factor when determining whether to exercise discretion to deny institution under 35 U.S.C. § 314(a).”)
[41] See Klein Tools, Inc. v. Milwaukee Elec. Tool Corp., IPR2024-01400, -01401, Paper 9 (June 9, 2025) (vacating institution in view of progress of parallel ITC proceeding).}