Trending At The PTAB: A Pivot On Discretionary Denials

On Feb. 28, the U.S. Patent and Trademark Office rescinded former Director Kathi Vidal's June 2022 memorandum outlining an interim procedure for discretionary denials.

In the notice rescinding the Vidal memorandum, the USPTO advised that portions of decisions relying on the Vidal memo will no longer be considered binding, or even persuasive.

Further, it instructed parties to post-grant proceedings to rely on prior PTAB precedential decisions for guidance, including the March 2020 decision in Apple Inc. v. Fintiv Inc. and the December 2020 decision Sotera Wireless Inc. v. Masimo Corp.

On March 24, the USPTO issued a memorandum providing new guidance consistent with the state of the board before the Vidal memorandum, and reintroducing challenges that petitioners previously faced before the Vidal memorandum.