On February 28, 2025, the United States Patent and Trademark Office (USPTO) rescinded a June 2022 memorandum clarifying when the Patent Trial and Appeal Board (PTAB) can issue discretionary denials of post-grant patent challenges, such as inter partes review (IPR) and post-grant review (PGR).
Before the 2022 memorandum, the PTAB had relied on factors listed in Apple Inc. v. Fintiv Inc. in deciding whether to deny institution of post-grant challenges, including:
- Whether a stay had been granted or may be granted in the parallel district court proceeding
- Proximity of the trial date to the PTAB's issuance of a final written decision
- Investment in the parallel proceeding
- Overlap in the issues
- Whether the petitioner and the defendant in the parallel proceeding are the same party
- “Other circumstances,” including the merits of the challenge
The 2022 memorandum limited those factors—and in doing so, led to a decline in discretionary denial of post-grant patent challenges.
With the memorandum now rescinded, practitioners can expect an increase in discretionary denials of post-grant patent challenges. The USPTO's latest move also clarifies that any “decisions relying on the Memorandum shall not be binding or persuasive on the PTAB.” And while the USPTO has not issued any formal guidance to replace the 2022 memorandum, the USPTO advised that practitioners should refer to PTAB precedent going forward.
To the extent any other PTAB or Director Review decisions rely on the Memorandum, the portions of those decisions relying on the Memorandum shall not be binding or persuasive on the PTAB.
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