Guidance on USPTO’s rescission of “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation”

The memorandum explains that the USPTO rescinded the June 21, 2022 "Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation" on February 28, 2025, restoring the guidance in place before it, including the precedential Fintiv and Sotera decisions. It then gives five points of guidance on the rescission's scope, ITC parallel proceedings, Sotera stipulations, evidence of trial timing, and the role of the merits in discretionary institution. Petitioners can no longer rely on the Interim Procedure and must meet Fintiv-based discretionary arguments, now including parallel ITC investigations, and a timely Sotera stipulation helps but does not decide the issue. Patent owners may rely on the Board's stated greater likelihood of denial where the ITC's projected final determination precedes the Board's final written decision deadline, and on the statement that compelling merits alone are not dispositive. The memorandum rests on the Director's and, by delegation, the Board's discretion over institution of IPR and PGR, and on Apple Inc. v. Fintiv, Inc., Sotera Wireless, Inc. v. Masimo Corp., and NXP USA, Inc. v. Impinj, Inc. The text does not cite a particular statutory section. WHAT IT DOES: (1) Applies the rescission to cases without an institution decision, or with a pending rehearing or Director Review request of an institution decision; the Board will consider timely requests for additional briefing case by case. (2) Applies the Fintiv factors to parallel ITC proceedings; denial is more likely when the ITC's projected final determination date is earlier than the Board's final written decision deadline, and less likely when it is later. (3) Treats a timely Sotera stipulation as highly relevant but not dispositive, considered within the holistic Fintiv analysis. (4) Allows the Board to consider evidence of record on the proximity of the district court trial date or ITC target date, including median time-to-trial statistics. (5) States that merits strength is part of the balanced assessment, but compelling merits alone is not dispositive. WHO AND WHEN: Dated March 24, 2025, addressed to Members of the Patent Trial and Appeal Board. It covers IPR and PGR cases with parallel district court or ITC litigation in which no institution decision has issued, or a rehearing or Director Review request on institution remains pending. Absent extraordinary circumstances, the Board will not revisit an institution decision if the time for seeking Director Review or rehearing has passed. The rescission itself occurred on February 28, 2025. KEY QUOTE: "However, compelling merits alone is not dispositive in making the assessment." (p. 3) EARLIER GUIDANCE AFFECTED: Rescinds the June 21, 2022 memorandum "Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation" (the "Interim Procedure"), restoring policy to the guidance in place before it, including the precedential decisions Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). It also cites NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Sept. 7, 2022) (precedential), on the timing of stipulations. PRACTICE TIP: Stop relying on the Interim Procedure; address the Fintiv factors fully before the institution decision, file any Sotera stipulation before that decision (covering the ITC where relevant), and put trial-date or ITC target-date evidence, such as median time-to-trial statistics, in the record, without relying on compelling merits alone. Issued by Scott R. Boalick, Administrative Patent Judge (Patent Trial and Appeal Board).