Ongoing Fintiv Expansion Under Fire

Acting USPTO Director Coke Morgan Stewart has steadily expanded the use of discretionary denials at the Patent Trial and Appeal Board (PTAB) since assuming her role in January. After withdrawing guidance from her predecessor, Kathi Vidal, that limited such denials based on parallel litigation under the NHK-Fintiv rule, Stewart has imposed a broader set of factors upon which a PTAB petition can be denied and has taken over the discretionary denial process herself as part of a new two-stage institution procedure. Since then, the acting director has applied these new factors extensively, even applying them to pending inter partes review (IPR) petitions filed before the withdrawal of the Vidal guidance—prompting two recent mandamus petitions from impacted petitioners, and a subsequent series of amicus briefs from industry stakeholders. Meanwhile, Stewart has issued a series of decisions that could further increase the use of discretionary denials, including one that