Intellectual Property Report

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

Jennifer Robichaux Carter, Zacharias Shepard

Key Takeaway: The PTAB has returned to a more flexible and discretionary approach to denying post-grant proceedings, reintroducing the Fintiv factors and adding new considerations such as settled expectations and USPTO workload. These changes significantly raise the stakes for both petitioners and patent owners, making timing, procedural posture, and strategic planning more important than ever.

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 In February 2025, the USPTO rescinded former USPTO Director Kathi Vidal's Interim Procedure for Discretionary Denials Memorandum ("Vidal Memo"). A few weeks later, Chief Administrative Patent