PTAB Issues Notice Of Discretionary Denial Rulemaking

On October 17th, the PTAB issued a Notice of Proposed Rulemaking regarding criteria for the Office to apply when making discretionary denial determinations.

The proposed rule would:

• Require an IPR petitioner to file a stipulation not to pursue any invalidity challenges under 35 U.S.C. §§ 102 or 103 (including product-prior-art-based grounds) in other forums (a Sotera+ stipulation);
• Provide that the USPTO will not institute an IPR when the USPTO (e.g., IPR, reexamination) or another forum (e.g., district court, ITC) already has adjudicated patentability or validity of the claims (regardless of whether the prior challenge was brought by another party); and
• Provide that the USPTO will not institute an IPR when another proceeding is likely to determine patentability or validity of the claims under §§ 102 or 103 first (e.g., the typical Fintiv scenario).