In May 2020, the Patent Trial and Appeal Board (“PTAB”) panel in Apple Inc. v. Fintiv, Inc. (IPR2020-00019) denied institution of Apple’s petition in view of the advanced state of a parallel district court litigation and in doing so set forth six non-exclusive factors to be considered when a patent owner requested that the PTAB deny institution based on a parallel litigation. Those six factors would become known as the Fintiv factors and are:
- whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted;
- proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision;
- investment in the parallel proceeding by the court and the parties;
- 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.
After the Fintiv decision, discretionary denials in view of parallel district court proceedings spiked considerably.
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 stated 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” based on a PTAB decision by that same name); or
- when a petition presents “compelling evidence” of unpatentability.
The Interim Guidelines also recognized that a court’s scheduled trial date, a key factor in Fintiv discretionary denials, is not always a good indicator of when trial will actually occur. 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 pending so that the panels could better gauge the likelihood of trial proceeding on the scheduled date.
Instances of discretionary denials notably declined following the issuance of the Interim Guidelines.
On February 28, 2025, the USPTO issued an unsigned notice stating that the Interim Guidelines had been rescinded and instructed parties and practitioners to again refer to the Fintiv and Sotera decisions when determining whether to deny institution based on a parallel proceeding.
The USPTO’s decision to rescind the Interim Guidelines was expected to increase the number of discretionary denials by removing petitioner’s safe harbors previously available under the Interim Guidelines. The first post-rescission decisions are now being published and shed some early light on what impact, if any, the rescission of the Interim Guidelines have on PTAB practice.
In short, rescission of the Interim Guidelines has had no impact, yet. Since February 28th, not even a single petition has been denied based on a parallel proceeding. A brief summary of some of the post-rescission PTAB institution decisions follows.
The first PTAB institution decision addressing the USPTO’s rescission of the Interim Guidelines was Savant Technologies LLC v. Feit Electric Company, Inc. (IPR2024-01357), published March 5, 2025. In this case, 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 board considered the parties’ proffered median time-to-trial statistics and found that the trial would likely occur “well after” a final written decision would issue.
In considering the Texas litigation, which was scheduled for trial on January 20, 2026, the panel noted 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. The panel went on to state that the time-to-trial evidence was not relevant because “the time-to-trial statistics are congruent with the scheduled trial date.” In particular, the average time to trial statistics in the Northern District of Texas suggested an earlier trial date than was scheduled. After considering the other Fintiv factors, including the merits of Petitioner’s arguments, the panel instituted the IPR.
Another decision published on March 5, 2025, Mobileye Global, Inc. v. Facet Technology Corp. (IPR2024-01110), also addressed patent owner’s request for discretionary denial. In that decision, the panel applied the Fintiv factors without any mention of the Interim Guidelines, which is notable because each party filed two post-preliminary response replies addressing the Interim Guidelines. After considering the Fintiv factors, the panel instituted IPR in this matter.
On March 7, the PTAB published its decision in Adobe Inc. v. Jaffe (IPR2024-01352). The panel did not reference the Interim Guidelines, but did consider median time-to-trial statistics while noting that the District Court had not set any trial date. Upon review of the Fintiv factors, the panel instituted IPR.
Most recently, on March 11, the PTAB issued its decision in Toyota Motor Corp. v. Emerging Automotive LLC (IPR2024-00785) denying petitioner’s request for rehearing of the panel’s prior decision denying institution. In this decision, the PTAB first agreed with petitioner that it overlooked certain aspects of a prior art reference that supported petitioner’s invalidity grounds but proceeded to deny institution for another reason—the advanced state of a parallel litigation.
In its decision, the panel noted that “we no longer apply the guidance set forth in [the Interim Guidelines]” but, as in the other cases, still at least facially considered the median time-to-trial statistics provided by the parties. Nevertheless, in light of the scheduled trial date preceding the anticipated final written decision by eight months and the merits “not [] particularly strong,” the panel denied institution.
In short, nearing two weeks after the Interim Guidelines were rescinded, it appears to be “business as usual” for discretionary denials at the PTAB.
The only discernible practice pointer from this small sample of decisions is that the PTAB continues to consider median time-to-trial statistics in the absence of a trial date but is likely to disregard such evidence when a trial date is set. Accordingly, we suggest that parties continue to address median time-to-trial statistics when no trial date has been set in the parallel proceeding but should be prepared for the PTAB to disregard such evidence if or when a trial date is set.