In May 2020, the PTAB panel in Apple Inc. v. Fintiv, Inc. (IPR2020-00019) denied the institution of Apple’s petition due to the advanced status of a parallel district court litigation. The panel outlined six non-exclusive factors to consider when a patent owner requests that the PTAB deny institution on this basis. These six factors became known as the Fintiv factors:
- Whether the court granted a stay or if evidence exists that one may be granted if a proceeding is instituted;
- The proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision;
- The investment in the parallel proceeding by the court and the parties;
- The overlap between issues raised in the petition and in the parallel proceeding;
- Whether the petitioner and the defendant in the parallel proceeding are the same party; and
- Other circumstances that impact the Board’s exercise of discretion, including the merits.
Following the Fintiv decision, discretionary denials based on parallel district court proceedings saw a notable increase.
In June 2022, then-USPTO Director Kathi Vidal issued a memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (the “Interim Guidelines”), in response to this spike in discretionary denials. The Interim Guidelines made it clear that a petition would not be denied:
- Based on a parallel U.S. International Trade Commission (ITC) proceeding;
- When a petitioner stipulates not to pursue in the parallel litigation the same grounds of invalidity as raised in the petition or any ground that could reasonably have been raised in the petition (referred to as a “Sotera stipulation,” named after a PTAB decision of the same name);
- When a petition presents “compelling evidence” of unpatentability.
The Interim Guidelines also acknowledged that a court’s scheduled trial date—an important factor in Fintiv discretionary denials—does not always serve as a reliable indicator of when the trial will actually take place. Accordingly, the Interim Guidelines allowed parties to present evidence of the median time-to-trial statistics for civil actions in the district court where the parallel litigation was ongoing.
After the introduction of the Interim Guidelines, discretionary denials decreased significantly.
On February 28, 2025, the USPTO issued an unsigned notice rescinding the Interim Guidelines and instructed parties and practitioners to once again refer to the Fintiv and Sotera decisions when determining whether to deny institution due to a parallel proceeding.
The rescission of the Interim Guidelines is expected to lead to an increase in discretionary denials, as it removes the safe harbors previously available to petitioners under the Interim Guidelines. However, it remains unclear how PTAB panels will handle requests for discretionary denials that were based on arguments submitted under the Interim Guidelines but were published after their rescission. Early decisions are starting to shed light on this issue.
In Hulu LLC v. Piranha Media Distribution, LLC (IPR2024-01253), published March 4, 2025, the panel cited the USPTO’s Interim Guidelines before declining to deny institution based on the parallel proceeding. This decision was likely authored prior to the USPTO’s February 28, 2025, notice rescinding the Interim Guidelines but was published afterward without revision.
The first PTAB institution decision addressing the rescission of the Interim Guidelines was Savant Technologies LLC v. Feit Electric Company, Inc. (IPR2024-01357), published March 5, 2025. In this case, the patent owner requested that the PTAB deny institution based on two related litigations in different districts—the Eastern District of Kentucky and the Northern District of Texas.
In considering the Kentucky litigation, where no trial date had been set, the panel reviewed the parties’ proffered median time-to-trial statistics and concluded that the trial would likely take place “well after” the final written decision was issued.
Regarding the Texas litigation, which was scheduled for trial on January 20, 2026, the panel acknowledged that “[w]hen the parties filed their papers, the USPTO was following now-rescinded guidance” that allowed parties to present median time-to-trial statistics. However, the panel determined that this time-to-trial evidence was not relevant “because we agree with Patent Owner that the time-to-trial statistics are congruent with the scheduled trial date.” In particular, the parallel litigation was set for trial on January 20, 2026, while the average time to trial in the Northern District of Texas suggested an earlier trial date in December 2025. After considering the other Fintiv factors, including the merits of the petitioner’s arguments, the panel proceeded with instituting the IPR.
Another decision published on March 5, 2025, Mobileye Global, Inc. v. Facet Technology Corp. (IPR2024-01110), also addressed the patent owner’s request for discretionary denial. In this case, the panel applied the Fintiv factors without any mention of the Interim Guidelines, which is notable because each party had filed two post-preliminary response replies referencing the Interim Guidelines. After considering the Fintiv factors, the panel instituted the IPR in this case as well.
From this small sample of decisions, it is clear that there has not been an uptick in discretionary denials since the USPTO rescinded its Interim Guidelines. However, as demonstrated by the Savant Technologies decision, the PTAB may continue to consider median time-to-trial statistics when a trial date has not been set, but will likely disregard such evidence once a trial date is established. Therefore, parties should continue to cite median time-to-trial statistics in the absence of a trial date, but be prepared for the PTAB to disregard this evidence once a trial date is confirmed. Our DC IP lawyers are here to assist maneuvering these intricate processes.