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ARTICLE · 31 JULY 2025

The PTAB Radically Changes Its Approach To Discretionary Denials

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Over the past several months the PTAB has dramatically increased the number of discretionary denials of Petitions for Inter Partes Review (IPR). The extent of, and varying rationales for, the discretionary denials...

United StatesIntellectual Property
Andrew Ollis
Andrew Ollis
Sana Tahir
Sana Tahir
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Over the past several months the PTAB has dramatically increased the number of discretionary denials of Petitions for Inter Partes Review (IPR). The extent of, and varying rationales for, the discretionary denials has caught many members of the patent bar by surprise and led, at least for now, to significant uncertainty for those considering filing an IPR Petition.

On February 28, 2025, the U.S. Patent and Trademark Office (USPTO) rescinded former USPTO Director Kathi Vidal's 2022 memo, "Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation" (Vidal Memo). The USPTO announcement directed that parties to post-grant proceedings should "refer to Patent Trial and Appeal Board (PTAB) precedent for guidance, including Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to §

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