Written by: Kyle Auteri
On March 26, 2025, the USPTO issued its Interim Processes for PTAB Workload Management, which bifurcated decisions on whether to institute an IPR or PGR between (i) discretionary considerations and (ii) merits and other non-discretionary statutory considerations. (The PTAB, or the “Board”, is the Patent Trial and Appeal board, administrative judges handling IPR and PGR proceedings.)
The new process begins like the old, with the filing of a petition to institute, and the merits based briefing schedule does not change (e.g., the patent owner preliminary response is still due within three months of the date the Notice of Filing Date Accorded is issued). However, with the new procedure the Petitioner does not address discretionary denial arguments preemptively in the petition. Instead, within two months of the date of the Notice of Filing Date Accorded, the patent owner may file a brief explaining the bases for discretionary denial of institution. The petitioner may file an opposition brief no later than one month after the due date for patent owner’s discretionary denial brief (the same day as the due date for the patent owner preliminary response).
Leave to file further briefing may be permitted by the Director for good cause. Both the opening brief and opposition briefs are limited to 14,000 words, and any reply brief, rarely allowed, will be limited to 5,600 words. For comparison, a petition for requesting an IPR is also limited to 14,000 words, and replies to patent owner responses to petitions are limited to 5,600 words. 37 C.F.R. § 42.24.
The new process only applies to IPR and PGR proceedings in which the patent owner files a preliminary response, or the deadline for the patent owner to file a preliminary response occurs, after March 26, 2025.
After the briefing is complete, the Director, in consultation with at least three PTAB judges, determines whether discretionary denial is appropriate. A review of the decisions issued as of July 6, 2025 indicates that the Director issues the determination based on discretionary considerations about a month after the petitioner’s opposition brief is due. If discretionary denial is not appropriate, the Director will refer the petition to a three-member panel to decide whether to institute on the merits and other non-discretionary statutory considerations.
According to the Interim Processes for PTAB Workload Management Memorandum, in the discretionary denial briefing, the parties are permitted to address all relevant considerations, which may include:
- Whether the PTAB 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.
As of July 6, 2025, in cases where the parties have completed discretionary denial briefing, the Director has issued 51 discretionary denial decisions. Of the 51 decisions, 27 granted discretionary denial, and 24 denied discretionary denial. A review of these decisions indicates that the settled expectations of the parties can be a decisive factor, in particular based on how long ago the patent had issued.
For example, in Irhythm Technologies, Inc. v. Welch Allyn, Inc. IPR2025-00363, Paper 10, at 2 (Jun. 6, 2025), the Director found that there were several reasons that weighed against discretionary denial, such as the fact that “the projected final written decision due date” for the IPR would be six months before the district court’s trial date, and there appeared “to be little investment by the parties in the district court proceeding and a high likelihood of a stay if an inter partes review is instituted.” However, the Director granted the request for discretionary denial because “one of the patents has been in force since as early as 2012 and Petitioner was aware of it as early as 2013.” Id., at 3. The Director reasoned that “Petitioner’s awareness of Patent Owner’s applications and failure to seek early review of the patents favors denial and outweighs the” factors that weighed against discretionary denial. Id., at 3; see also Apotex Inc. v. Alkermes Pharma Ireland Limited, IPR2025-00514, Paper10, at 2 (Jul. 2, 2025) (“In particular, the challenged patent has been in force for more than 14 years, creating strong settled expectations, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources.”).
Similarly, in Intel Corporation v. Proxense LLC, the Director found that, despite finding that the fact that “there no longer is an underlying district court trial date” counseled against discretionary denial, the Director granted the request for discretionary denial based on the fact that “the challenged patents have been in force over nine years, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources.” IPR2025-00327, 328, 329, Paper 12, at 2 (Jun. 26, 2025). The Director did give examples of what may be persuasive reasons:
- “a significant change in law may have occurred since the patent issued, and a petitioner can explain how that change in law directly bears on the patentability of the challenged claims”; and
- “a patent may have been in force for years but may not have been commercialized, asserted, marked, licensed, or otherwise applied in a petitioner’s particular technology space, if at all.”
Id., at 2-3.
Other example cases where the Director granted a request for discretionary denial primarily, if not exclusively, based on the age of the patent and the timing of the petition are, Dabico Airport Solutions Inc. v. Axa Power Aps, where “the challenged patent has been in force almost eight years” (IPR2025-00408, Paper 21, at 2 (Jun. 18, 2025); and Sig Sauer Inc. v. Lone Star Future Weapons, Inc., where the patent issued over 10 years ago (IPR2025-00410, Paper 13, at 2 (Jun. 26, 2025)).
One notable example where the Director denied a request for discretionary denial is Posco Co., Ltd. v. Arcelormittal, IPR2025-00370, 371, Paper 10 (Jun. 25, 2025), which dealt with the time to trial for a parallel International Trade commission (“ITC”) proceeding. As way of background, on February 28, 2025, the USPTO rescinded the June 21, 2022 memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“the Fintiv Memo”). One of the notable resulting changes was that, unlike when the Fintive Memo was in force, the Board would apply the Finitv factors when there is a parallel proceeding at the ITC. Previously, the Fintiv factor dealing with time to trial was limited to District Court proceedings. In Posco Co., decided after the recission of the Fintiv Memo, there were several considerations favoring discretionary denial, including that the challenged patent was involved in parallel ITC investigation with an initial determination date and target date for completion of the investigation that was seven months ahead of the projected date for the final written decision, and the parties had completed substantial investment in the ITC proceeding, such as completing post-hearing briefing. IPR2025-00370, 371, Paper 10, at 2 (Jun. 25, 2025). However, there were factors weighing against discretionary denial. For example, the petitioner was not a party in the ITC proceeding, only the Petitioner’s customer, listed as a real party-in-interest in the Petitioner, was a party in the ITC proceeding. Id., at 2-3. What really “tip[ed] the balance against discretionary denial” was the settled expectations of the parties. Id., at 2-3. Specifically, the Director agreed that the “claims were ‘highly vulnerable to invalidation based on prior art’” based on Petitioner’s success in invalidating all the claims of the parent of the challenged patent. Id., at 2-3.
Thus, the settled expectations of the parties is a particularly strong factor, depending on the circumstances, that can outweigh considerations regarding time to trial in a parallel proceeding, and resources expended in the parallel proceeding.
Another example where time to trial (in this case for a district court proceeding) was outweighed by other considerations is Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00217, 219, 220, 221, 222, 339, Paper 10 (Jun. 13, 2025). In that case, there were several factors that weighed towards discretionary denial: (1) the scheduled trial date preceded the projected final written decision date, (2) there was insufficient evidence that the district court would likely stay the proceeding if there was an institution, and (3) there was meaningful investment in the parallel proceeding by the parties. Id., at 2. However, other considerations counseled against discretionary denial, for example, “Petitioner has filed a broad stipulation and asserts that the merits are strong because the Board previously determined there was a reasonable likelihood that similar claims of an ancestor patent were unpatentable in three separate proceedings with respect to some of the challenged patents in these proceedings.” Id. Presumably, the merits-based stipulation related to the expectations of the parties (i.e., a patent owner who has had its ancestor patent found unpatentable should not have high expectations that the descendant patent would be found patentable). Ultimately, what tipped “the balance against discretionary denial” were “Petitioner’s arguments regarding the complex and diverse litigation proceeding,” which involved “eleven patents spanning nine different families that involve a diverse range of subject matter.” Id., at 3. The Director reasoned that “the Board is better suited to review a large number of patents involving diverse subject matter.” Id.; see also Berkshire Hathaway Energy Company v. Birchtech Corp., IPR2025-00274, 278, 280, 281, Paper 23, at 2-3 (Jul. 2, 2025) (“Because the litigation between the parties would proceed to several district court trials in different jurisdictions, resolving the dispute between the parties at the Office would be more efficient.”)
Another example of a case involving a scheduled trial date preceding a final written decision is Amazon.com, Inc. v. Nl Giken Inc., IPR2025-00250, 407, Paper 14 (May 16, 2025). In that case, the district court’s scheduled trial date was eight days before projected final written decision; however, time-to-trial statistics suggested trial would not begin until about five to six months after the final written decisions. One of the points noted in the memo which rescinded the Fintiv Memo, was that “in applying Fintiv, the Board may consider any evidence that the parties make of record that bears on the proximity of the district court’s trial date or the ITC’s final determination target date, including median time-to-trial statistics.”
The bottom line is that, while the scheduled time-to-trial of a parallel proceeding is an important factor, other considerations, such as the settled expectations of the parties (such as based on the amount of time the patent has been issued or previous invalidity challenged to related claims), the complexity of the parallel proceeding, or time-to-trial statistics that suggest the scheduled time-to-trial will actually be later than a final IPR written decision may be more determinative of whether discretionary denial is granted or denied.
