The Biden-era U.S. Patent and Trademark Office issued a June 21, 2022 memorandum by former Director Kathi Vidal that offered interim guidance on discretionary denials of post-grant proceedings at the Patent Trial and Appeal Board. The memo was intended to clarify that PTAB would consider validity challenges despite the flexible discretionary denial approach of Apple v. Fintiv, an early 2020 PTAB decision that led to over 200 denials.
Apple v. Fintiv outlined a six-factor test for PTAB to use for determining whether to deny an institution of an inter partes review (IPR) or a post grant review (PGR) of a patent involved in a parallel district court case. These factors include 1) whether a stay would be granted; 2) scheduled trial date; 3) investment of resources and progress of district court proceeding; 4) overlap of issues; 5) parties involved; 6) and other impactful concerns. After Apple v. Fintiv, the PTAB enjoyed broad discretion to deny IPRs and PGRs.
The Vidal memo effectively limited this broad discretion by clarifying that the PTAB should not deny review where 1) there is compelling evidence of unpatentability; 2) there is a parallel ITC proceeding; 3) a petition stipulates not to pursue the same arguments in district court that could be raised before the PTAB; or where 4) the parallel proceeding scheduled trial date is considered unreliable.
On February 28, 2025, the USPTO rescinded the Vidal memo, removing its limiting effect. (See USPTO rescinds memorandum addressing discretionary denial procedures). The PTAB may now again enjoy broader discretion within the Fintiv framework, which could result in a rise in denials of patent validity challenges, and perhaps eventually a decrease in the number of PTAB validity challenges filed.